Getting an 101 abstract idea rejection on a software patent application is like starting a bad relationship. In other words, something is wrong but no one will tell you how to overcome the problem. Abstract idea rejections by patent examiners are most common in software patent applications. At the very beginning of the patent application, you’ll see this quote:
The U.S. Patent & Trademark Office (USPTO) provides a landing page to assistant with “subject matter eligibility.” However, the founding case, Alice v. CLS Bank did not convey how to handle software patents. Rather, Alice identified the unpatentable aspects of claims but not the patentable. The Supreme Court tends to rule in broad strokes. Not surprisingly, the lower courts and the USPTO attempt to do their best to figure it out.
When in Doubt…Reject
Patent examiners face little consequence rejecting a valid claim. However, allowing an invalid patent is dangerous. For one thing, litigation of that patent could cost millions per side. Consequently, when found invalid by the PTAB, district court or Federal Circuit, the blame comes back to the patent examiner. Undeniably, a utility patent is a powerful restraint of trade. Obviously, bad patents hurt consumers and businesses.
Examination of software patents for abstract ideas is tricky and uncertain. Accordingly, a patent examiner needs to feel comfortable with allowing the claims. Quite often, this involves writing the claims in a manner to convey low-level technical operation of:
- Computer processor;
- Data store holding machine-readable values;
- Software instructions executable by the computer processor; and
- Display devices for output.
The challenge is that every patent examiner is different. As of July 2020, 8,243 patent examiners work at the USPTO (reference). Consequently, how can you possible know how to draft your claims to the expectations of your examiner? You can. Here are the steps:
Look up the patent examiner
On Private PAIR, the USPTO assigns a patent examiner well-before examination starts. In particular, for Track I accelerated cases you have 1-3 weeks to act after assignment. In contrast, examiners assigned to non-accelerated take about a year to pick it up. For example:
Next, go to the USPTO Patent Full-Text and Image Database and search for the patent examiner.
Accordingly, we have a list of patents granted by this particular examiner:
Overcome the rejection using the examiner’s prior patents
Pulling the most recent patent, claim 1 shows the type of software patent claim construction this patent examiner is comfortable with. For example, the structural elements include:
- managing interface;
- operation interfaces;
- computing devices;
- monitoring modules;
- connection status data;
- time records;
- notifying messages; and
- analyzing modules.
Accordingly, an industrious patent attorney may overcome an abstract idea rejection for a software patent using this method. In other words, know your audience.
The first step in exceeding your customer’s expectations is to know those expectations.Roy H. Williams (website)
In conclusion, take a few minutes to learn about your examiner. Unquestionably, you will have a more efficient and successful outcome for your client.