Patent practitioners are still grappling with the fallout from the Supreme Court’s decision in Alice v. CLS Bank. Despite three sets of guidelines issued the PTO over the last two years for examination under Alice, many attorneys are finding themselves facing Alice rejections from patent examiners at an increasing rate. This is particularly true for applications in art units involving software and business methods.
Despite this trend, there are several strategies patent attorneys can use to increase their chances of overcoming Alice. So to speak, you can “engineer” your application to create the best opportunity for allowance. For an application that involves matter in an art unit with a high Alice rejection rate, there are several ways to reposition the application in order to increase its likelihood of overcoming the §101 hurdle.
One way to put your application in the best position for allowance, even before examination begins, is to draft the specification with a heavy focus on how the invention is tied to the underlying hardware. This can greatly enhance your prospects of overcoming the §101 hurdle by anticipating both prongs of the Mayo analysis (which was reaffirmed by the SCOTUS in Alice) in your specification. In order to anticipate a potential §101 rejection based on the claimed subject matter being drawn to a patent ineligible abstract idea, include a technical inventive concept and plenty of technical-heavy, concrete terminology, along with more technical drawings, to demonstrate how the invention is implemented. By approaching the drafting of your application in this way, you are facilitating the analysis that your inventive concept is “significantly more” than an abstract idea, satisfying both prongs of the Mayo test proactively.
Another strategy for positioning your application pre-examination is to utilize keywords in your specification that places your application in the art unit you think is most appropriate. For example, if you are concerned about your application potentially being classified in a riskier art unit known for high rates of Alice rejections, you can include keywords for an art unit with a lower Alice rejection rate right in the specification. This may help the office direct your application toward the best possible art unit for prosecution. Additionally, once examination has begun and your application is classified in an art unit with a high §101 rejection rate, you can also file a Continuation in Part (CIP) including new matter that would lead to the reclassification of your application in a different art unit.
Yet another method for repositioning your application is to understand how the PTO moves applications around once your non-provisional application has been filed. The office classifies and reclassifies applications based on the narrowest dependent claim. Keeping this in mind, you can draft or amend your most narrow dependent claim in order to demand treatment from an art unit with a higher allowance rate.
These approaches illustrate that patent practitioners have options when it comes to overcoming an Alice rejection. While the statistics regarding Alice rejections remain intimidating, by employing the above strategies, patent attorneys can give their applications the best chance for allowance.