Are you stumped by a 35 U.S.C. § 101 rejection? This abrupt bump on your patent application journey indicates a disconnect between your invention and patent eligibility requirements. Our direct approach in this article clarifies exactly what a 101 rejection entails and equips you with robust techniques for a successful Office Action Amendment.
Skills and Insights You Will Unlock from This Article:
- Gain a strategic advantage by understanding the intricacies of patent eligibility under Section 35 U.S.C. § 101. By mastering these four statutory categories and exceptions, you’ll be better equipped to craft claims that may overcome a 35 U.S.C. § 101.
- Navigate the patent examination process with confidence by utilizing the Alice two-part test. This knowledge empowers you to draft your claims in a way that showcases the ‘inventive concept’ necessary for overcoming rejections.
- Enhance your ability to draft claims effectively, ensuring they align with statutory requirements. This skill enables you to address examiner concerns with precision, increasing the probability of your patent being granted.
- Access a wealth of practical drafting strategies that unlock the potential for a successful amendment to overcome 35 U.S.C. 101 rejection and how best to draft your application to avoid it.
Understanding the 35 U.S.C. § 101 Rejection
Embarking on the journey of drafting a patent application for software inventions often leads inventors to confront a significant challenge: the 35 U.S.C. § 101 rejection. Section 101 states: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.”
As you will soon learn, software inventions do not fit neatly with the statutory framework, and rejections under 35 U.S.C. § 101 occur when the claims in your patent application are not directed to patent eligible subject matter.
Patent Eligibility Criteria for Software Inventions
\In our initial consultation, we are often asked if software can be patented. The short answer is “Yes!” Software inventions are patentable subject matter if properly claimed in your patent application. According to the United States Patent and Trademark Office (USPTO), a software process refers to an act or series of steps your software executes. Thus, the patentability of your software invention stems directly from how the patent application is drafted and how the process or method is described. To ensure your software is patent eligible subject matter, your software application must be directed to the process or method of execution on a computer or mobile computing device and include all accompanying hardware or components where it’s implemented.
However, it’s important to understand before embarking on the patent process that some inventions are not considered to be patent eligible because they are directed to “judicially recognized exceptions” to the patent eligible subject matter under 35 U.S.C. § 101. Specifically, abstract ideas, laws of nature, and natural phenomena are considered judicially recognized exceptions that are not patent eligible.
The mistake held by many software inventors is thinking that the sheer ingenuity of their code or first-to-market advantage guarantees eligibility for a patent. Instead, a clear articulation of how the software functions, improves computer functionality or solves a specific technological problem is required to receive a Notice of Allowance for your software patent application.
The Role of the Patent Examiner
At the USPTO Examiners play a pivotal role in determining patent eligibility, diligently verifying that every application adheres to the strict standards outlined under 35 U.S.C. §101. After filing your non-provisional patent application, a USPTO Examiner will substantively examine it for patentability. Once the Examiner has completed their examination of your patent application, the Examiner may detail any grounds for rejection or objection in an Office Action.
An Office Action can raise one or more issues regarding the patentability of your application in light of the statutory requirement for patentability or prior art of record. However, the primary focus of the examination is on the novelty and patentability of your claims in the application. While their function is often underestimated, the specification and drawings are used to support your claim set and may provide a vital role should any claim amendment be necessary for an Office Action.
There are two types of Office Actions: Non-Final Office Actions and Final Office Actions. Each of these Office Actions will have one or more grounds for rejection. If you received a Non-Final Office Action, there are several strategies available while responding to the Examiner’s rejection. The first option is that you may argue that the rejection is improper (e.g., that the Examiner failed to consider all the elements of the rejected claim, or the Examiner misinterpreted the claim limitations, features within the cited art, or combination of cited references).
You may also argue that prior art references cited were published after the effective filing date of your software patent application, or that the Examiner’s reasoning was flawed. The second option is that you may amend one or more of the rejected claims and argue that the amended claims overcome the rejections and cited art. However, you must ensure there is support for your claim amendments somewhere in the specification or drawing figures as adding “new matter” is prohibited.
A response to an Office Action requires a detailed analysis of each claim rejection, objection, and any other issues raised by the Examiner in the Office Action. Failure to address every issue in the Office Action may result in further rejection or a Notice of Incomplete Reply from the USPTO.
What is Alice and What Does it Mean for Software Patents?
Alice Corp v. CLS Bank International, 573 U.S. 208 (2014) was a monumental Supreme Court decision that rocked the foundation of software patents and examination protocols at the USPTO. In a unanimous decision written by Justice Clarence Thomas, the Supreme Court held that patent claims granted for computer-implemented electronic escrow services were directed to merely an abstract idea and not patentable subject matter. The Alice decision has had a profound impact on the way Examiners at the USPTO examine software patents.
The decision laid out a two-step analysis, whereby a determination is first made as to whether the subject matter claimed in a patent is directed to an abstract idea. If yes, the claims need to add “something extra” that embodies an “inventive concept.” While the Supreme Court included several examples of what may or may not qualify as “something more,” the ambiguity of the decision and lack of guidance led to issues in implementing clear and consistent standards by lower courts and during examination by USPTO Examiners. The dramatic effect of the Supreme Court’s decision left many in the software industry wondering whether their software patents had become useless.
The software industry has made tremendous strides in the last ten years since the Alice decision and new USPTO Examiner guidance has been issued on how to best determine subject-matter eligibility of software patent applications. The result of this new guidance has increased the number of software patent applications being granted by more than 22% in the last three years with over 60% of all applications granted in 2020 being software or computer-implemented technologies.
Step One: Identifying Abstract Ideas and Natural Phenomena
Step 1: Check whether the claim is directed to a statutory category (process, machine, manufacture, composition of matter, or improvement thereof). If “no,” then the claim is directed to subject matter ineligible for patent protection. If “yes,” go to Step 2A.
Step Two: Assessing Inventive Concepts
Step 2A: Check whether the claim is directed to a statutory exception (laws of nature, natural phenomena (product of nature), or abstract idea). If “no,” then the claim is directed to subject matter eligible for patent protection. If “yes,” go to Step 2B.
Step 2B: Check whether the claim recites additional elements that amount to “significantly more” than the judicial exception. If “no,” then the claim is directed to subject matter ineligible for patent protection. If “yes,” then the claim is directed toward patent eligible subject matter.
What is a Patent Office Action
When the USPTO receives a patent application, it is placed in a queue for examination. The average time it takes before an application is examined has varied throughout the years based on the assigned art unit, but you can reasonably expect to wait around eighteen months before your Examiner will review your application for the first time. After the Examiner has completed their examination of your patent application, the Examiner details their findings in an Office Action.
An Office Action can raise one or more issues regarding any part of the patent application. However, the primary focus of the examination is on the claims. The claims are examined for both formalities and patentability. The other parts of the patent application are examined to determine whether they provide adequate support for each of the claims. An Office action can raise any of the following issues:
Claim Rejections
Only claims can be “rejected.” Rejections can be made based on prior art. Prior art can be one or more publicly available documents that the Examiner cites as disclosing the features claimed in your patent application that existed before your patent application’s filing date (or priority date, when your application claims benefit to a previously filed application). If multiple claims are pending, some of the claims might be rejected while others could be allowed and/or objected to.
Claim Objections
Your patent application will include one or more independent claims and a series of dependent claims. Independent claims stand on their own and do not refer to (or “depend” on) any other claims. Dependent claims refer to (or “depend” on) an independent claim or another dependent claim and thereby include or inherit all the limitations and elements of the claim, or chain of claims, to which the dependent claim refers. If the dependent claim in question is allowable but for the rejection of the independent claim that it depends on (and the dependent claims in the chain, if any are present and also rejected), then the dependent claim in question will be objected to based on the rejection of claim(s) on which it depends.
Examiners are required to explain their reasoning to support each rejection and objection they raise in an Office Action. One or more claims may be rejected based on one or more issues the Examiner cites, such as existing prior art references and/or failure to comply with legal requirements, and the Office Action should include reasonings for each of the rejections. Below are some of the most common reasons for rejection of claims in an Office Action:
Strategies for Overcoming 35 U.S.C. § 101 Rejection
I recommend the following steps when preparing and drafting your Office Action Amendment to traverse your 35 U.S.C 101 rejection:
1. Analyze the Examiner’s reasoning for each step of the subject matter eligibility test. Break the rejection down to clearly map each of the Examiner’s allegations to the respective Steps (1, 2A, or 2B) above.
2. Identify any weaknesses in the Examiner’s reasoning for each Step in the analysis:
a. Did the Examiner fail to properly apply any of the Steps?
- Many times, an Examiner has force-fit a claim set into an “abstract idea” mold. Closely review and determine whether any of the Examiner’s statements that map the claim to ineligible subject matter are non-factual or a mischaracterization of the claimed invention. Also, analyze whether the Examiner failed to mention particular parts of the claim when making their argument. We often see that an Examiner abstains from or downplays the elements in the claim limitations that would most weaken their argument. As is true in many things in life, it may be more important to determine what was not said;
b. Draw analogies by utilizing the subject matter eligibility examples in the USPTO Examination Guidance, keeping the following questions in mind:
- Do your claims have more things in common with the examples that are “eligible” or “ineligible”?
- Can your claims be made to better fit the mold of any of the “eligible” examples? By learning the justifications used in “eligible” examples, you will have tools added to your toolbelt to successfully argue against the Examiner’s position;
c. Do the claims provide an “inventive concept” not discussed in the Office Action?
d. Is it possible to explain how the claim falls into any statutory category?
3. Respond with arguments to each point in the Examiner’s analysis for each Step based on the above;
Research your Examiner
It is not well known that you can search for cases previously allowed by your Examiner using tools such as the Advanced Search in PatFT. How can this help? You can find examples of cases allowed by your Examiner to understand how they base previous office action arguments. You can find that Examiners often have the same style of rejections in many cases. If you have an Alice rejection, research examples of responses that others have filed to the Examiner’s rejections that were able to overcome your Examiners’ Alice rejections.
Draft Your Claims to Avoid Difficult Art Units
It would be highly beneficial to avoid art units where your odds of allowance are worse than others but you don’t get that opportunity when you file your application. It is no secret amongst practitioners that patent applications that are assigned to business methods art unit 3600 have substantially lower allowance rates than those in other, related art units. Hiring a skilled practitioner can be useful in drafting claims that help your application avoid being sent to the infamous 3600 art unit. “Targeted drafting” and a basic understanding of the USPTO classification process are general requirements in artfully drafting claims to implement this strategy, which an experienced and savvy practitioner will possess.
Recently, the USPTO has been using automated systems as a first pass to docket cases to art units. These systems look for key terms in specific parts of your application to identify which art unit and classification your application is assigned. The key portions of your patent application where these key terms are found is within both your claims and specification. Examples of keywords that these systems use for business methods can include banking terms, gaming terms, pricing terms, and related concepts. As an example of the way the USPTO defines business methods, consider the USPTO’s characterization:
“The Business Methods area of the USPTO is a collection of subject matter areas in Technology Center 3600 that grants patents related to Data Processing: Financial, Business Practice, Management, or Cost/Pricing Determination.”
So, if your claimed invention includes terms from these categories, it would be wise to avoid key terms in your application.
Responding to an Office Action Rejection
A response to an Office Action requires meticulous attention to each rejection, objection, and/or other issue raised by the Examiner. Failure to address every issue in the Office Action may result in further rejections of your patent application, additional filing fees, or even abandonment of your application.
Claim rejections that cite prior art will provide detailed reasoning for the rejection. You have two options in response:
(1) Argue that the rejection is improper (for example, that the Examiner failed to consider all of the elements of the rejected claim, that the Examiner misconstrued the claim and/or the cited prior art, that the multiple prior art disclosures cannot be properly combined, that prior art that was published after and not before the effective filing date, that the Examiner’s reasoning was flawed or faulty, or other arguments); and/or
(2) Amend one or more of the rejected claims and argue that the amended claims overcome the rejections with sound supporting reasoning
The same strategy may be used when addressing objections: argue that the objection is improper and/or the objected claim has been amended to overcome the objection. Objections can also be placed in abeyance during the prosecution of the patent application, which is most often done when a dependent claim is allowable but for the rejection of an independent claim to which the dependent claim refers.
This type of response is only available after a Non-Final Office Action or after a Final Office Action in the situations described above (canceling claims or complying with form requirements, presenting rejected claims in better form for consideration on appeal, or touching the merits of the application upon a showing of good and sufficient reasons may also be proper). Outside of these instances, for the Examiner to consider a response after a final Office action, you can file an RCE (Request for Continued Examination).
Addressing Examiner Concerns
One of the most effective ways to address the Examiner’s concerns is to pick up the phone and conduct an Examiner Interview. An Examiner Interview is a pre-scheduled discussion with the Examiner, generally conducted over the telephone, regarding the claim rejections and/or objections outlined in the Office Action and potential amendments addressing these concerns. Applicants represented by a Patent Attorney may participate in the interview.
However, saying the wrong thing or making an improper admission during an Examiner Interview can affect the chances of your application being allowed. In some situations, the Interview leads to an Examiner’s Amendment, placing the claims in the application in condition for an allowance without the Applicant having to file a formal response to an outstanding Office Action. Interviews can be Examiner initiated or requested by the Applicant.
The best way to prepare for an Examiner Interview is to fully consider the issues raised in the Office Action and how best to frame your response to the Office Action. Then you may prepare an agenda of items to discuss. Next, you may contact the Examiner and schedule a convenient time to discuss the Office Action and proposed response and to email the agenda with any proposed amendments to the Examiner. Then, you can discuss with the Patent Examiner to better understand the reasoning behind their rejections and their interpretation of terms and phrases and take the opportunity to highlight and clarify any misunderstandings or differences in interpretation.
Common Mistakes When Drafting Your Software Patent Application
Drafting a strong software patent application is an art unit that takes practitioners years to master so it’s highly advisable to seek a patent firm that specializes in the technology. Ask yourself: would you try and perform dental surgery on yourself? Of course not. you would go to the professionals who are the best in the business.
Claim drafting is a skill that requires both understanding the novelty of the invention and being able to articulate that functionality in your claim set. As with any patent, there are specific criteria that need to be met to ensure your software is patentable subject matter and not considered too abstract for patentability under 35 U.S.C. § 101. In addition to being patent eligible, your software invention must also be novel and non-obvious over what is already known in the relevant art. You cannot obtain a patent on a software invention if the software already exists anywhere in the world or if your invention has been disclosed in the public domain for over one year.
Here are a few tips to help you identify the “point of novelty” in your software invention
1. What is your inventive concept?
2. What are your software’s proprietary features?
3. What unique functionality will your software platform execute?
4. What technical improvement over existing technology will your software provide?
These questions will help you identify the “points of novelty” in your software by thinking about the unique functionality of your software. This requires an understanding that functionality is how a combination of features works to provide the desired outcome. Recognizing the unique functionality will also help identify what specific features your software employs.
If you want to avoid having your software application rejected by the USPTO Examiner as being too “abstract” under 35 U.S.C. § 101, it’s best to incorporate both the technical challenges others have faced and the inventive technical improvements implemented through your software and how the inventive technical functionality of your software has been narrowly tailored to provide a technical solution.
The more specific you can articulate the inventive concepts of your software and how your claimed software provides a technical solution to a technical problem the better the chances your application will withstand an “abstract” rejection. Preparing a robust specification including any definition of terms ensures the broadest reasonable interpretation of your claims during examination.
What to Avoid When Drafting Your Software Application
You should avoid describing generic functionality, reciting automation of human activity that has traditionally been manually performed, and/or reciting “conventional actions performed in a generic way” in your claim set and detailed description.
Preparing for Potential Challenges
It’s important to understand right from the start that not every patent application is successful based on the initial submission. Your patent application may either be accepted, rejected or objected to in an office action rejection. In short, an office action rejection happens when the patent content is “unallowable,” but an objection happens when something is simply incorrect, such as a typographical error. Examiners issue a rejection based on the merits of the claim.
Neither rejections nor objections spell the end of the road for your patent application. Objections can typically be overcome by amending the indefinite or ambiguous claim language of your application under 35 U.S.C. § 112. Claim rejections can typically be overcome by amending your claim language in your application and/or arguing that the prior art references are not anticipated or should not be combined with your Examiner.
Summary
From understanding the intricacies of the 35 U.S.C. § 101 rejection to leveraging the intricacies of the Alice test, and from crafting strategic responses to examiner concerns to staying ahead of legal and technological shifts, this guide has charted a course to help innovators navigate the challenges of patent eligibility. May this beacon of knowledge light your path to securing the patent rights your invention deserves.
Frequently Asked Questions
What are the arguments for 35 U.S.C. § 102
Overcoming a 35 U.S.C. § 102 “anticipation” rejection requires demonstrating to the USPTO Examiner that the recited prior art reference fails to disclose every element of your claimed invention. Rejections based on anticipation are rejections based on a single reference disclosure or publication that occurred more than one year before the filing date (or priority date) of the patent application.
These rejections find statutory support in 35 U.S.C. § 102, which also indicates that if a claimed invention is described in a printed publication, in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention, it is not patentable. This follows under the principle that if something existed anywhere in the public domain (i.e., worldwide) not a new or novel invention if someone later claims it.
How can I determine if my invention is patent-eligible subject matter?
The USPTO requires certain criteria for an invention to be eligible for patent protection. An invention can only be considered patent-eligible subject matter if it fits within the statutory framework of 35 U.S.C. §101 and is new and novel, non-obvious, and useful. A few examples of inventions that may qualify for a patent are:
- Simple or complex machines with new functionality or structure
- New technological processes or methods
- Computer software algorithms or that provide technical solutions
- Material compositions made of living organisms, food, or chemicals
- Some examples of inventions that would NOT qualify for a patent are:
- Abstract ideas
- Natural Phenomena
- Discovery, scientific theory, or mathematical methods
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