INSIGHT: Overcoming Patent Subject Matter Eligibility Rejections

May 13, 2020, 8:01 AM

Navigating the murky waters of recent patent subject matter eligibility issues should be approached with careful consideration and compassed by experience.

Explain the Improvement of the Invention in the Specification

The U.S. Patent & Trademark Office’s latest guidanceon subject matter eligibility, does not constitute substantive rulemaking or law, but it does constitute USPTO guidance and examiners are expected to follow it.

The guidance makes clear that an important factor in evaluating subject matter eligibility is whether the claims reflect an improvement to a technology or in a technical field, such as in the functioning of a computer. Although the specification or the claim need not explicitly set forth the improvement, practitioners should provide sufficient details of the improvement in the specification and the claims such that one of ordinary skill in the art would recognize the improvement.

Moreover, practitioners may reasonably assert that the claim reflects an improvement to a technology or in a technical field by relating an alleged abstract idea to the improvement, thereby integrating an alleged abstract idea into a practical application and thus concluding that this assertion imposes a meaningful limit on the alleged abstract idea. In this manner, practitioners have footing in the specification to substantiate their position.

This is particularly helpful since the guidance makes clear that examiners are not expected to make a qualitative judgment on the merits of the asserted improvement.

Highlight Benefits of the Invention over the Prior Art

When drafting an application or responding to an office action, practitioners should highlight the technical benefits of the invention over prior art or the state of the art. Although in the past practitioners have avoided discussion of prior art, an explanation of the specific improvements of the invention in view of prior art may preempt a subject matter eligibility rejection.

Consider Submitting a Declaration

In the past, practitioners rarely submitted declarations to overcome eligibility rejections. Under the guidance, practitioners should consider submitting a declaration to establish how the specification would be interpreted by one of ordinary skill in the art as improving technology. The declaration should include a supporting factual basis directed to the asserted improvement as disclosed in the specification. If possible, it may be beneficial to have a disinterested third party, instead of an inventor, submit the declaration.

Conduct Examiner Interviews Early and Often

Practitioners may find it particularly beneficial to conduct interviews with examiners to specifically discuss a subject matter eligibility rejection. In the past, practitioners would primarily focus on addressing prior art rejections in an interview; now practitioners should proactively establish a working relationship with, and be a bit deferential to, the examiner to obtain their assistance to determine the scope of possible claim amendments to overcome the subject matter eligibility rejection.

Obtaining the examiner’s opinion on subject matter eligibility prior to filing a response to an office action can short-circuit prosecution time.

Defer Substantively Addressing Subject Matter Eligibility Rejection

In many, but certainly not all, instances, consider employing an approach in which the subject matter eligibility rejection is substantively deferred by filing a form response to the subject matter eligibility rejection until the prior art rejections are overcome. By overcoming anticipation and/or obviousness rejections through substantive claim amendments, the subject matter eligibility rejection may be concurrently addressed.

Additionally, given the continuous dynamics of subject matter eligibility guidelines, the subject matter eligibility rejection may be withdrawn without the need for significant amendments or substantively addressing the rejection upon issuance of any new case law or revised guidance from the USPTO.

Confirm the Examiner Classified the Abstract Idea Based on ‘Enumerated Groupings’

The latest guidance explains how the USPTO has shifted its subject matter eligibility approach from a “case-comparison” analysis to “enumerated-groupings” analysis. An alleged abstract idea must fall within a particular grouping, such as within “mathematical concepts,” “certain method of organizing human activities,” and “mental processes,” instead of a comparison to previous cases.

These groupings are not mutually exclusive, and numerous subgroupings and examples from the guidance are identified that can be used to determine how claims may recite limitations that fall within the abstract idea grouping. Practitioners should stick to this road map for their analysis when confirming that the examiner properly classified the abstract idea.

Recognize That Berkheimer Analysis Is Conditional

The guidance reiterates examiner compliance with the Berkheimer Memorandum. If the examiner asserts that a claim element recites well-understood, routine, conventional (WRC) activity, then he/she is required to expressly support such a rejection in writing with one of four options set forth in the memo.

Such assertions have infrequently appeared in subject matter eligibility rejections since the examiner has an affirmative enumerated burden to substantiate their position on WRC activity. Thus, it is helpful for practitioners to point to the Berkheimer analysis upon recognizing an assertion of WRC activity.

This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.

Author Information

Daniel G. Vivarelli Jr. is a partner at Hunton Andrews Kurth in Washington, D.C. His practice focuses on intellectual property, including trade secret and patent litigation, patent prosecution and counseling. Vivarelli represents clients in high-stakes trade secrets and patent litigation, with a particular emphasis on software-related innovations in the financial services and oil and gas industries.

Daniel G. Shanley is a partner at Hunton Andrews Kurth in Washington, D.C.. He focuses his practice on electro-mechanical patent matters, which includes preparing and prosecuting U.S., PCT, and foreign utility and design patent applications; patent office post-grant proceedings; strategic counseling and due diligence; managing complex patent prosecution dockets; conducting studies of patent validity and infringement; performing freedom-to-operate studies; and assisting with intellectual property licensing and litigation.

Anu Sharma is an associate at Hunton Andrews Kurth in Washington, D.C. He focuses his practice on prosecution, litigation, and post-grant and administrative trials. He works to proactively understand his clients’ goals prior to delivering tailored advice in a concise and practical manner.

Gregory Miller is an associate in the Intellectual Property section in Hunton Andrews Kurth’s New York office. He concentrates his practice on the preparation and prosecution of patents, patent appeals, patent opinions, patent litigation, intellectual property licensing and acquisitions, transactions, agreements and due diligence.

Armin Ghiam is an associate at Hunton Andrews Kurth in New York. His practice focuses on litigation, counseling and prosecution in the fields of patent, trademark and copyright law. With an international background in law, finance and technology, Ghiam helps companies understand the complexities of the intellectual property law to make important business decisions and achieve their objectives.

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