Solving § 101 Subject Matter Issues

Software and high-tech companies looking to create robust, licensable, and litigation-ready patent portfolios face no shortage of roadblocks at the USPTO. By partnering with Harness Dickey, clients receive the support of registered patent attorneys and patent agents with decades of experience in obtaining computer and software patents. Our professionals possess demonstrable experience with § 101 issues on behalf of some of the world’s most sophisticated software companies and use a proven methodology to put our clients in the best position to defeat § 101 rejections.

Success in Overcoming § 101 Challenges

As an initial indication of our success in overcoming § 101 challenges, a 2019 ranking by Juristat awarded Harness Dickey the #2 position among high-volume firms for overcoming Alice rejections after the first try (the “overcome rate”) and the #5 position for firms prosecuting patent applications with one or more Alice rejections through to allowance (the “allowance rate”). This translates directly into increased odds of success for clients, as more than 60% of § 101 rejections and more than 8% of all rejections cite Alice Corp v. CLS Bank.

As an example, a healthcare services company wanted to protect their calculations of profitability metrics for certain patients. This subject matter is highly likely to draw insurmountable § 101 rejections, so we carefully drafted the claims to emphasize the technical aspects of the data structures and calculations. As a result, the USPTO assigned the application to an art unit where § 101 rejections are less frequent. The first Office Action identified allowable subject matter in 18 of the 20 claims, which the client gladly accepted.

In another example, we took over the prosecution of an application for a fintech client. Prior counsel prosecuted the application to an impasse and then appealed. Our attorneys evaluated the appeal arguments and claims, identified multiple improvements to strengthen the 101 posture of the claims, and proposed pulling the application from appeal. The client agreed, so we filed an RCE, amended the claims to highlight the elements that supported eligibility, and submitted more robust arguments. In one month, the Examiner — who had previously written an Examiner’s Answer arguing for the ineligibility of the claims — mailed a Notice of Allowance.

Proven Methodology for Overcoming § 101 Rejections

We represent sophisticated technology companies that regularly face subject matter eligibility issues. They call on us to draft patent applications that aim to avoid § 101 issues altogether and, if necessary, provide a proper foundation to argue against a § 101 rejection. Our success in circumventing and overcoming § 101 rejections is based on the following strategies:

  1. Draft a patent application based on specific best practices developed through extensive experience in obtaining computer, Internet, and software patents. These practices provide clients with the best opportunity at defeating § 101 rejections. See our example test case below.
  2. Conduct Examiner interviews whenever possible. There is no substitute for these interviews, and their value is especially high for statutory subject matter issues where different art units and Examiners follow different criteria. For example, some Examiners may require a minor formal amendment without the need to strenuously argue case law and features of the claims. By interviewing the Examiner, before submitting a response that could create prosecution history estoppel, we determine who has decision-making authority — the Examiner, the Examiner’s supervisor, a § 101 subject matter expert in the art unit, etc. — and their criteria for evaluating statutory subject matter.

    Notably, Harness Dickey attorneys engage Examiners through approximately 2,500 interviews each year. We have long-lasting relationships with many Examiners and know how to build rapport with new ones quickly, allowing us to secure valuable claim coverage quickly through productive and collegial interviews.

You can see this methodology in action with a hypothetical virtual reality technology. With the following techniques, we are able to draft a patent application with a higher likelihood of circumventing and overcoming § 101 challenges.

  1. Claim physical devices and equipment, such as controllers and user platforms, that are specific to the type of VR system to which the patent application is directed. For example, claim physical structures that are designed specifically to provide a control interface between the user and the particular VR environment, and claim devices that facilitate the VR experience.
  2. Claim additional external signals that are used in the VR system, such as biological signals.
  3. Describe details such as the interconnection of components and the signals they exchange, including user interfaces and displays generated by the VR system.
  4. Claim VR elements that aid the simulated activity, especially non-physical, VR-only elements.
  5. Include figures and descriptions of the individual physical components of the VR system.
  6. Include a system diagram, and a corresponding description, explaining how the physical components are related and interconnected.
  7. Draw figures depicting multiple views of the virtual space of the VR system and the virtual elements within the virtual space. Further, include descriptions of the virtual elements and an indication of which virtual elements are virtual-only elements.
  8. Explain how the claimed subject matter represents a technological improvement or a technological solution to a technological problem.
  9. Include discussions of any elements, methods, or techniques that were created or adapted to address one or more issues that arise within the context of creating a VR system for the particular type of training being simulated.
  10. Because some U.S. federal judges heavily weight the advantages an invention affords when evaluating statutory subject matter, list self-serving advantages of the invention and develop a problem-solution story of the hurdles the inventors had to overcome when conceiving of their invention.

Additional Resources for Mitigating § 101 Issues

Of course, patent quality is not simply the inclusion of technical detail and the absence of errors. We strive for efficient prosecution and use several strategies and software tools to meet exceptional quality standards, including the following:

  1. We supplement our interviewing skills with Examiner statistics that can inform tactical decisions, such as whether to request a pre-appeal conference review instead of going straight to appeal. In addition, when making strategic portfolio management decisions, our team can identify which pending assets are most statistically likely to mature into issued patents first and which will require additional investment of time and money. Harness Dickey relies on data whenever possible, including our own data sets as well as third party data sources.
  2. We leverage a relational database system named IPDAS across our prosecution practice, including for one of the most data-intensive tasks in patent prosecution: information disclosure statements. Inadvertently failing to cite a single reference in these statements can create a toehold for an infringer to challenge the patent. IPDAS allows us to track the references we cite and group related patent applications together so that references cited in one application will be automatically available for citation in related applications. We then use IPDAS to create the actual information disclosure statements, effectively eliminating manual steps such as cutting-and-pasting from a list of references. This systematic approach ensures the greatest reduction of risk for our clients in this critical area. Beyond legal risk, we also reduce expenses by avoiding expensive Requests for Continued Examination (RCEs) just to submit art that could have been submitted earlier. 

    We further use IPDAS, when electronically filing with the USPTO, to select cited references as well as any necessary translations, upload the documents, and enter application details. Because we structure our document manager by client and then by application, IPDAS ensures that the only documents chosen are for the correct application.

  3. We use proprietary and commercial software, such as ClaimMaster, to perform a number of time-saving tasks, including creating new sets of claims for prosecution based on prior amended claims. The result is that we are able to minimize clerical errors and free up more time to provide clients with substantive counseling. We also use ClaimMaster and other in-house and commercial software during drafting and prosecution to perform automated testing of various aspects of the claims — such as antecedent basis, correct status identifiers, etc. — and specification to ensure quality.

Beyond § 101, we do not lose focus on key issues during prosecution, including the potential for licensing opportunities and international filings. Harness Dickey drafts applications to ensure the best chance of success in overcoming any issues based on written description and enablement, as well as to put the application in the best condition for future foreign filings. In sum, our detailed approach to application drafting supports our later efforts in persuading patent offices around the world that the invention is a technological contribution, not simply a business or marketing idea.

Thought Leadership on § 101 Topics

Given the array of sophisticated clients we serve and our experience in providing them with solutions to § 101 issues, we have established an ongoing internal dialogue related to the best practices in overcoming § 101 rejections. Our long-standing Computer Practice Group regularly discusses the latest developments in case law and shares the best strategies for adapting to them with all members of the firm. As can be expected, § 101 issues are one of the group’s highest priorities. Our collaborative approach ensures that we can always find an expert for any given technical or legal challenge, and speeds the adoption of firm-wide best practices for preventing and overcoming § 101 issues.

Our IP professionals are regularly called upon to present and instruct on § 101 topics. For example, our attorneys regularly lead internal presentations on software trends, patentability issues, and relevant cases, and we often invite in-house counsel and international associates to attend. Our attorneys also lead presentations directly at client offices and at conferences hosted by organizations such as the Society of Women Engineers (SWE), the Center for American and International Law (CAIL) in Plano, Texas, and the Brazilian Intellectual Property Association (ABPI).

Additionally, Harness Dickey attorneys are often quoted in industry publications on § 101 issues. We invite you to scroll through our blog posts and news items to see our thoughts and comments on the topic of § 101.

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