Prosecution is the bread and butter of the patent lawyer’s practice. Because you will likely spend most of your time during the workday reading and responding to office actions, honing skills specific to this aspect of your practice can have a major impact on how efficiently and effectively you are able to manage your practice overall.
Office action responses are where patent prosecutors get to “be lawyers.” Patent applications are very focused on the technology and, aside from the claims, could be written by a technical writer. But office action responses are where you will put your legal skills to work including:
Developing a strategy for responding to the rejections
Researching cases, regulations, and MPEP sections that support your strategy
Writing persuasive arguments that are supported by the law
Negotiating with examiners to overcome the rejection
Your prosecution work will lay the foundation for the road you are to face with clients and examiners. Successful prosecution means issued patents. Unsuccessful prosecution will land you, your client, and the examiner in a never-ending cycle of rejections and responses.
Here is a crash course in drafting a winning office action response:
Many attorneys find it helpful to begin by reviewing an office action response example which can serve as a template for the office action response being prepared. Doing this will:
Help you meet the expectations of examiners and clients about what an office action response should look like.
Ensure you do not leave anything out that might trigger a technical office action saying your document was non-responsive.
Improve your efficiency.
Developing a template for use now can save time with future office action responses as well. This means you can spend your clients’ time researching and writing effective arguments instead of formatting your document.
Reading is Fundamental
Perhaps you remember the slogan from children’s literacy campaigns that “reading is fundamental.” It is nowhere more true than patent prosecution.
The examiner wrote an office action laying out the reasons for rejection. You must read the office action carefully. If you miss, misread, or misinterpret a ground for rejection, you will needlessly extend prosecution by submitting an incomplete response.
Keep in mind that the easiest office action responses to write are those where the examiner has made a factual error. Examiners make mistakes, and they will occasionally misread your claims or the prior art. If you carefully read the office action and cited references, you can catch these mistakes and correct the examiner with a quick response.
Think Before You Write
You might be tempted to jump right into writing the office action response. But before you start writing, you have a few important decisions to make and some research to conduct.
Interviewing the Case
Nearly all experienced attorneys we have talked to recommend examiner interviews as among the most important tools at a prosecutor’s disposal. If you’re lucky, you might have a simple rejection, in which case, interviewing might allow you to overcome the rejection by examiner’s amendment without filing a response. More often, you will be dealing with a more complex rejection, in which case, interviewing can help you narrow down or eliminate some issues. Even if you are not able to get the examiner to agree on allowance during the interview, this will help you submit a more focused response.
Many aspects of how you approach the interview are a matter of personal style and preference, that you will refine over the course of practice. However, to get the most out of this important resource, we recommend that you are are:
Early: some examiners are more forthcoming than others when it comes to what they are looking for to succeed. At minimum, conducting the interview early on in the prosecution will ensure that you don’t waste time pursuing a strategy that is far off track
Well-prepared: make sure you have planned the discussion thoroughly in advance. You may want to consider preparing an agenda to share with the examiner.
Non-confrontational: At minimum make sure you have checked your frustrations at the door, and counseled any inventors who will be attending to do the same. You may even wish to think of the interview as an opportunity to collaborate with the examiner.
We’ve compiled a list of tips to help you master your next examiner interview, which you can read in greater detail here.
Amending the Claims
There are important tradeoffs to be considered when it comes to amending the claims. Amending the claims, particularly in a way that reflects guidance offered by the examiner during an interview, can demonstrate that you take his or her concerns seriously and that you are willing to compromise to secure allowance.
However, it is best to proceed with some caution, as amending the claims can limit the scope of protection you are able to secure. If you can overcome a rejection without amending the claims, you and your client are almost always better off doing so.
There is no quick and easy way to make this decision. You will make this judgment on a case-by-case basis. However, it can be helpful to look at the examiner’s history to gain insight into what strategies have or have not, been successful in overcoming this rejection in the past. Using a tool like Arguminer, you can research the examiner’s past behavior to help you chart your path forward.
Developing Your Arguments
Many new patent attorneys are unsure about how long an office action response should be. More important than length is how well-thought-out your argument is. A succinct, well-composed argument may well be more successful than a response that is lengthy, but less focused, and may better capture and hold the examiner’s attention.
Remember, examiners have a limited amount of time to devote to each case on their docket. Burdening an examiner with a long, flowery argument will force the examiner to skim your office action response. A punchy argument will keep the examiner’s attention and allow the examiner to identify what you are arguing and how to respond.
At the same time, complex arguments can require more than a few paragraphs to develop. For example, a rejection under §101 will probably need to apply the Alice test and the examination guidelines to the case.
You have many sources for finding and developing arguments. A quote from a case or the MPEP can provide compelling arguments in some cases. However, it is important to remember that because the MPEP is designed for examiners not patent prosecutors, the support you can derive from this source may be limited in scope and is often inefficient to locate. Colleagues with prior experience with your examiner or issue are an excellent resource and can often provide additional guidance. Finally, tools like Arguminer can help you conduct pin-pointed research to identify which arguments have worked or failed in the past.
Variance in Examiner Behavior
This last point is critical. Examiner variance accounts for much of the outcome in a case. For example, in U.S. Application Serial No. 15/108,712, “Methods, Apparatus, Systems and Mechanisms for Secure Attribute Based Friend Find and Proximity Discovery’” an examiner issued a “mental steps” rejection under §101. In response, the applicant argued:
There is a fundamental difference between the types of claims that the courts have deemed to be ineligible under this exception and the present claims. Specifically, in the cases discussed in MPEP 2106.04(a)(2), subsection Ill.B, the allegedly inventive steps or elements of the claims (i.e., what the claims were directed to) were mental steps that could be performed in the human mind…. However, unlike the cases discussed in MPEP 2106.04(a)(2), … the steps in the pending claims that cannot be performed in the human mind are not ancillary steps to the invention to which the claims are directed. Rather, they are the crux of the invention.
In U.S. Application Serial No.15/610,596, “Method for Predicting Business Income from User Transaction Data,” a different examiner issued the same rejection and the applicant responded with:
… the claims recite operations that are advantageously performed by components of a communication network (a processor [e.g., of a server] deployed in the communication network) and cannot be performed as mental steps in a human’s mind. Moreover, the claims include significant features that go well beyond simply “using an index to search for and retrieve data” and “collecting information, analyzing it, and displaying certain results of the collection and analysis” within a particular technological environment, and therefore do not seek to tie up a judicial exception.
These responses are very similar in both quality and substance. But the first argument succeeded and the second failed. By doing a bit of research into an examiner’s history with a particular issue, you can hit the right points in your argument to persuade an examiner to allow your case.
Successful Patent Prosecution is Not a Gamble
For clients, it can sometimes seem as if their success rate with patent applications is dictated by chance. Although many aspects of prosecution cannot be controlled, with proper preparation and execution, patent prosecution can be guided in the direction of your desired outcome. By reading the office action carefully, and planning your response before you begin writing, and researching what has worked in the past using tools like Arguminer from IP Toolworks, you can give your clients the best possible chances at success.
Here is how you can use Arguminer to draw inspiration for the case at hand:
Step 1 – Drag & Drop or click to upload a copy of your Office Action
Step 2 – Get results from our database of millions of responses showing what worked for other people facing rejections like yours.
Step 3 – Customize searching to pinpoint the best options by filtering for examiner, date, keywords and more.
Step 4 – Take what you’ve found to apply a strategy you know was successful in almost no time at all.
“If MPEP is the rule book, Arguminer is the practical guide to how patent prosecutors have applied those rules (and more) to overcome patent rejections.”
Area of help (Broad)
Area of Help (Narrow)
Teaches legal Rules & Procedures
Sample Prosecution Arguments
File Wrapper Search
Rejection Specific Arguments
Identifies Successful Responses
Examples of Examiner Behavior
MPEP is Designed for Examiners | Arguminer is Designed for Prosecutors
In general, the MPEP is designed to help examiners examine applications which, in practice, means helping examiners make and maintain rejections. The result of this is that, while the MPEP is broadly accurate, its discussion will often lack nuance and omit information that applicants are likely to find important in responding to rejections. This is not the case with the Arguminer software, since it is designed to help applicants overcome rejections, not to help examiners make them.
For example, if someone had a case where they thought the examiner erred by treating a single prior art structure as covering separate claim elements, they could simply use the Arguminer software to perform a keyword search for “separate elements” to identify a plethora of arguments (with supporting citations) on that precise issue (e.g., running this search quickly, I pulled up the response of 4-28-2017 on application 14/450,321, which provides an extensive list of cases on this issue). Doing the same search in the MPEP would only turn up a single brief mention in the context of functional language as part of a string citation regarding means plus function claims (a type of claim that most applicants try to avoid using in any event).
Where is MPEP Guidance Lacking?
Because the MPEP is written from the perspective of an examiner rather than an applicant, its guidance is not directed to overcoming rejections. Here are some (but by no means all) areas where the MPEP is lacking:
Broadest Reasonable Interpretation
The MPEP downplays the importance of avoiding hindsight, and the rules that are in place to prevent a hindsight reconstruction of the applicant’s invention. Indeed, MPEP 2145(X)(A) specifically provides the following guidance for responding to an applicant who asserts that a conclusion of obviousness is based on impermissible hindsight:
Applicants may argue that the examiner’s conclusion of obviousness is based on improper hindsight reasoning. However, “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). Applicants may also argue that the combination of two or more references is “hindsight” because “express” motivation to combine the references is lacking. However, there is no requirement that an “express, written motivation to combine must appear in prior art references before a finding of obviousness.” See Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276, 69 USPQ2d 1686, 1690 (Fed. Cir. 2004).
While it is true that there is no requirement for an express, written motivation to combine references, the patent trial and appeal board has explained that “[t]o preclude hindsight in an obviousness analysis, the Examiner must identify evidence ‘in the form of some teaching, suggestion, or even mere motivation (conceivably found within the knowledge of an ordinarily skilled artisan) to make the variation or combination.’” Ex Parte Kageyama, Appeal No. 2020-002742 on application 15/810,275 (PTAB, 2021), quoting Rolls-Royce, PLC v. United Techs Corp., 603 F.3d 1325, 1338 (Fed. Cir. 2010).
Similarly, while the MPEP lists various arguments an applicant may make with respect to obviousness (often for the purpose of providing guidance on rejecting those arguments), the listing provided by the MPEP is by no means comprehensive. For example, the MPEP does not mention that when a primary reference teaches a solution to a problem, solving that problem cannot be relied on as the reason for modifying the primary reference using the teachings of a secondary reference, something the PTAB made clear in Ex Parte Allen, Appeal No. 2018-008208 on application 14/712,101 (PTAB, 2020).
The MPEP (section 2175.05(i)) correctly notes that “Any negative limitation or exclusionary proviso must have basis in the original disclosure.” However, the only example given in the MPEP of how a disclosure can support a negative limitation is that “[i]f alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” While it is not inaccurate to say that disclosure of alternative elements can provide support for a negative limitation, someone relying on the MPEP would be unlikely to realize that it is possible to support a negative limitation even without disclosure of alternative elements. E.g., Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.”).
Broadest Reasonable Interpretation
The MPEP accurately states the rule that during patent examination, the pending claims must be given their broadest reasonable interpretation consistent with the specification. However, while it does provide some examples of scenarios where interpretive issues may arise (e.g., effect of various transitional phrases, wherein clauses), like the examples of arguments that can be made in response to an obviousness rejection, the information in the MPEP is in no way complete.
For example, one issue which an applicant may want to be aware of is whether it is proper to treat separate limitations in the claim as being physically separate structures. However, the MPEP’s treatment of the broadest reasonable interpretation rule does not include any indication that interpreting separate elements as not requiring separate structures is something examiners have repeatedly been reversed for. E.g., Ex Parte Moore, Appeal No. 2020-004805 on Application 15/423,780 (PTAB 2021) (“We agree with Appellant. We find that under the broadest reasonable interpretation of the claim, one of ordinary skill in the art would not consider the telescoping rod 34b to be part of the base.”); Ex Parte Denison, Appeal No. 2009-004110 on application 10/158,362 (BPAI, 2010) (“we note that it is not reasonable to rely on the same structure depicted at the interconnection of Berry’s stent segments to meet both of the limitations requiring a ‘double-curved shaped portion’ and a ‘Y-shaped portion.’”).
Using arguments from the MPEP to respond to office actions may be an effective strategy for some rejections. But determining whether the MPEP contains effective arguments for any given grounds of rejection is highly inefficient. This inefficiency is not accidental. Rather, it comes from the nature of the MPEP. The MPEP was not written from the perspective of a patent prosecutor responding to office actions. As a result, MPEP provides only a few effective arguments and no effective way to find them.
This is not the case with a tool like Arguminer which was specifically developed to assist in identifying effective and, more importantly, successful arguments for responding to office actions. To learn more about the power of Arguminer to help you find and make effective arguments, contact us.
We used our extensive database of patent prosecution documents to identify patent attorneys and agents with the highest performance, based on their ability to overcome 101 rejections, considering both granted patents and applications in which all 101s were overcome but that may not have ultimately issued for other reasons. The seven women selected for recognition boast exceptional track records, having each successfully prosecuted between fifty and ninety applications facing 101 rejections at time of publication. Such achievement rightly affords best-in-class status, placing our recipients within the top 0.3% of patent prosecutors in this challenging field.
Subject matter eligibility rejections, particularly post-Alice, are notoriously among the thorniest faced by patent prosecutors. As guidance and rulings surrounding this area of law have taken form so dynamically over the past seven years, the success of our featured patent attorneys and agents is not only a testament to their considerable acumen, but demonstrates a remarkable mental flexibility. Moreover, as several of our featured attorneys and agents note, significant variability in interpreting these changing standards means that it is often necessary to create diverse strategies to situate legal arguments for each response within the context both of the claimed technology and assigned art unit. Doing so can help to break through boiler-plate language and get to promising arguments or amendments. Our selectees additionally speak to the importance of getting to know the preferences of individual examiners, often exercising finesse in working creatively and collaboratively with the examiner and relevant supervisors to lay the groundwork for allowance during the interview phase and beyond.
It is our belief that there can be no more powerful opportunity for learning how to succeed than to draw upon the knowledge and experience of those who have already achieved it. For this reason, we asked each of the seven women featured if she would be willing to share insights into the practices that contributed to her impressive results. Below you will find a bio for each recipient followed by a practice tip that each personally contributed, designed to offer guidance to new practitioners facing 101 rejections.
IP Toolworks Cofounder and CEO
Anne Davis Barry
Cantor Colburn LLP
Anne Davis Barry is a Partner at Cantor Colburn LLP and co-chairs the Computer Science Practice Group. She is responsible for leading her team in securing patent protection to meet client product launch deadlines; for partnering with clients on-site in patent mining sessions to form patent protection strategies; and for management of final work product of associates. Anne focuses her practice on obtaining patents in computer technologies including computer hardware, databases, networks and operating systems, as well as cloud computing, artificial intelligence, and software applications to solve real-world problems. Her experience also encompasses drafting opinions and providing support for patent litigation.
Prior to her legal career, Anne worked for IBM for more than 15 years in various technical positions including computer programmer and on the implementation of database and storage technologies at client locations. As an IBM Certified Project Manager,she successfully managed several large fixed-price consulting projects. Anne is an Adjunct Professor at UConn Law, where she has been teaching both Intros to Patent Law and Advanced Topics in Patent Law since 2002.
Practice Tip [for new attorneys facing subject matter eligibility rejections]:
You have received an Office Action from the PTO stating that your client’s patent application has been rejected under Section 101 as being directed to ineligible subject matter. You are grappling with how to respond to the rejection as there are still a wide range of interpretations and applications of the Alice decision and its progeny by Examiners (see e.g., “Adjusting to Alice” at uspto.gov). All is not lost! There is something that you can do that has a real of chance of giving you the direction that you need to address the 101 rejection and to advance prosecution of your client’s patent application: schedule a thirty-minute interview with the Examiner.
Prepare for the interview by reviewing the latest PTO Subject Matter Eligibility Guidance and finding the examples of eligible subject matter that are most like your case. Create an agenda for the interview that points out these examples while being mindful that the agenda will become part of the record. Be sure to send the agenda to the Examiner a couple of days in advance of the interview so that they have time to prepare for the interview. During the interview, be respectful and actively listen to the Examiner’s position and pursue suggestions they have for getting around the 101 rejection. Once you understand the Examiner’s position, you can better advocate for your client during the interview and when responding to the Office Action. Examiner interviews, which provide the chance to have a conversation with the Examiner, are an important patent prosecution tool that should not be overlooked, particularly when faced with a 101 rejection.
During the interview, be respectful and actively listen to the Examiner’s position as well as any suggestions they have for getting around the 101 rejection. Once you understand the Examiner’s position you can better advocate for your client during the interview and when responding to the Office Action.
Kelly S. Horn
Finnegan, Henderson, Farabow, Garrett & Dunner
As a registered patent attorney, Kelly Horn combines her extensive knowledge of Patent Office practice with her experience as a patent litigator to help clients build, assert, and defend strategic portfolios of utility and design patents worldwide. She maintains an active patent prosecution and counseling practice and draws on her experience before the USPTO to help clients assert and defend patent infringement claims before the U.S. International Trade Commission (ITC) and in U.S. district courts.
Kelly’s technical experience spans a broad range of technologies, including medical imaging, biosurgical products, welding systems, control systems, automotive systems, power production systems, blockchain technology, and communications systems. Prior to entering the legal field, Kelly performed undergraduate research in bioinformatics and completed a graduate thesis directed to the engineering of magnetic viral nanoheaters for the targeted hyperthermic treatment of cancer. She has worked for Johnson & Johnson, performing research within its medical device division. Kelly also represents clients including military veterans and disabled Americans on a pro bono basis before the U.S. Court of Appeals for Veterans Claims and the Social Security Administration (SSA).
Don’t hesitate to conduct Examiner interviews early in prosecution, even after receiving the first non-final Office Action. If you prepare with a proposed amendment and 1-2 of your best arguments based on the amendment, the Examiner will usually provide guidance as to whether the amendment will likely overcome the Section 101 rejection or needs to be adjusted. Because each art unit has interpreted the USPTO and court guidance slightly differently for the subject matter in that unit, the Examiner can be a helpful resource in tailoring your amendments and arguments in a subject matter specific manner. By conducting early interviews and getting Examiner feedback before multiple rounds of prosecution, prosecution can often be compacted.
Because each art unit has interpreted the USPTO and court guidance slightly differently for the subject matter in that unit, the Examiner can be a helpful resource in tailoring your amendments and arguments in a subject matter specific manner.
Lee & Hayes
Bea leads Lee & Hayes’ International Practice where she advises on a variety of intellectual property matters including inventor agreements, drafting and prosecuting US and PCT patent applications, and managing international patent portfolios. Bea applies her knowledge of US patent policy and procedures to meaningfully advance her clients’ interests and enhance the business value of their assets.
Her technical expertise spans information security, artificial intelligence including machine learning, machine vision, data mining and related computer technologies, mechanical and electrical devices, energy management solutions, business methods, and financial technology. While her practice largely focuses on computer-implemented inventions, she facilitates international IP protection for clients across the firm with an emphasis on partnering with the right foreign counsel for each client.
Bea served as a Patent Examiner at the USPTO in the technologies of computer security and cryptography. She applies that experience to more efficiently prosecute applications for her clients. She has regularly been honored as one of the top 1000 patent practitioners worldwide by Intellectual Asset Magazine (IAM). Bea has long been active in the firm’s Diversity and Inclusion efforts and is passionate about supporting DEI initiatives in STEM and the legal profession.
My primary tip for new patent practitioners is to focus on answering questions related to “what” (performs an action or causes an action to be performed), and “how” (a result is achieved, or an action is performed or caused to be performed). Also, conduct an interview with the Examiner as soon as possible in prosecution, which can help you get on the same page in terms of claim focus.Bea enjoys speaking on many IP topics including how US activities shape the international patent landscape, drafting patent applications to computer-implemented inventions for successful prosecution in the US, China, Japan, Canada, and before the European Patent Office, patentable subject matter, patent quality in the US, international protection of intellectual property, and foreign filing license and inventor remuneration requirements.
Focus on answering questions related to “what” (performs an action or causes an action to be performed), and “how” (a result is achieved, or an action is performed or caused to be performed).
Shook, Hardy & Bacon
As a Patent Agent with 14 years of experience in the intellectual property field, Mollie applies her technical expertise to patent application drafting and prosecution, patent-product portfolio analysis, and related matters. Her practice focuses on computer software, applications of artificial intelligence, digital health, and technologies that fall under Technology Center 3600 at the USPTO. Mollie’s technical experience encompasses firmware, software, microcontrollers, digital electronics, and hardware/firmware integration, in the fields of avionics, remote sensing, and healthcare. She received her BSEE from the University of Missouri-Rolla (now the Missouri University of Science and Technology).
Under Mayo Step 2A (Prong Two) and Step 2B, don’t let the examiner ignore any of the “additional elements” in a claim. Examiners often focus only on hardware elements, using language such as “This judicial exception is not integrated into a practical application because the additional elements of processors and computer storage media are recited at a high level of generality . . . .” However, additional elements include any features/limitations/steps beyond the identified judicial exception. MPEP 2106.07. As described in the 2019 PEG Examples 37, 40, 41, and 42, these may include steps such as receiving, transmitting, collecting, transforming, generating, storing, and steps performed via a GUI. Other GUI-related features can also be additional elements. Use the combination of additional elements to attack the examiner’s boilerplate language. This can be especially effective under Step 2B in combination with the Berkheimer Memorandum (now incorporated into MPEP 2106.05(d)).
Don’t let the examiner ignore any of the “additional elements” in a claim … Use the combination of additional elements to attack the examiner’s boilerplate language. This can be especially effective under Step 2B in combination with the Berkheimer Memorandum (now incorporated into MPEP 2106.05(d)).
Kilpatrick Townsend & Stockton
Ruthleen Uy is counsel at Kilpatrick Townsend and Stockton in their San Diego office and has 19 years of patent experience. Ruthleen focuses her practice on the preparation and prosecution of patent applications in the computer, electrical, and mechanical arts including applications directed to computer architecture, computer hardware, databases, financial technology, mobile communications, mobile devices, and telecommunications. Additionally, Ruthleen has experience prosecuting applications in medical devices.
I find it extremely beneficial to discuss 35 USC 101 rejections (abstract idea rejections) with Examiners through Examiner interviews. When scheduling your interviews, make sure that your Examiner has authority to agree with you regarding arguments and amendments for overcoming 101. If your Examiner does not have the authority to indicate whether the arguments/amendments will overcome the 101 rejection, then try to get the Examiner’s Primary Examiner, Supervising Examiner, or the Technology Center (TC) specialist for the art unit to join your interview.
During the interview, I ask the Examiners what they look for in overcoming 101. For example, some Examiners want claims to be similar to the USPTO subject matter eligibility examples. Some Examiners are looking for specific hardware or specific software in the claims. Some Examiners want arguments laid out in a manner that clearly follows the eligibility analysis flowchart. I have also noticed that Examiners in an art unit tend to address 101 issues similarly. For example, in an attempt to be consistent, Examiners in one or more art units may agree that certain types of subject matter would overcome a 101 rejection. I usually ask my Examiners what the practice is for their art unit and try to determine arguments and/or amendments based on the current practice for their art unit.
Another option is to use tools that provide you with statistics on Examiners. You can see which arguments and types of responses (e.g., amendment, pre-appeal brief, appeal brief, etc.) worked in overcoming 101 rejections for certain Examiners.
Based on the recent guidance (2019 PEG), the number of 101 rejections (abstract idea rejections) being issued has decreased. Further, Examiners are more amenable to discussing arguments and/or amendments that they agree will overcome the 101 rejection, which is the suggested best practice for Examiners per MPEP 2106.07(a)(II) (“In the event a rejection is made, it is a best practice for the examiner to consult the specification to determine if there are elements that could be added to the claim to make it eligible. If so, the examiner should identify those elements in the Office action and suggest them as a way to overcome the rejection.”).
… Some Examiners want claims to be similar to the USPTO subject matter eligibility examples. Some Examiners are looking for specific hardware or specific software in the claims. Some Examiners want arguments laid out in a manner that clearly follows the eligibility analysis flowchart.
Linda M. Vierra
Bryan Cave Leighton Paisner
Linda M. Vierra is a registered patent attorney whose practice focuses on intellectual property law including drafting patent applications and patent prosecution. Her legal experience encompasses areas of computer science, artificial intelligence, machine learning approaches, mobile applications, and business applications. Linda has a B.S. in molecular biology and a B.A. in economics. Prior to joining Bryan Cave Leighton Paisner, Linda’s legal experience encompassed all areas of complex litigation with a law firm in Oregon.
Here is a tip that I use as a constructive way to engage with a patent examiner during prosecution of a patent application for a 101 or a prior art rejection from an Office Action:
Use each interview with a respective patent examiner for a 101 rejection as a collaborative experience rather than an adversarial one. During the interview, engage in a type of “active brainstorming” with the patent examiner based on support you can readily point to in the specification. Such an approach often leads to determining more than one way to amend the claims that move prosecution forward even when no agreement was reached in the interview.
Use each interview with a respective patent examiner for a 101 rejection as a collaborative experience rather than an adversarial one… Such an approach often leads to determining more than one way to amend the claims that move prosecution forward even when no agreement was reached.
Jennifer A. Wilson
Buchanan Ingersoll & Rooney
Jennifer Wilson is a patent agent in Buchanan’s Intellectual Property section. Her practice focuses on the representation of high-technology clients in connection with patent prosecution in the electrical and mechanical fields. She prosecutes domestic and international patent applications in a range of technologies including computer/business methods, semiconductors, computer architecture and wireless technologies. Early in her career, Jennifer served as a patent examiner for the USPTO within its electrical division, where she reviewed U.S. and international patent applications in a wide range of technologies, including transformers, capacitors, inductors, converters, integrated circuits, semiconductors, electrical switches and ignition coils.
Jennifer earned a B.S. cum laude, in Theoretical Physics from the Edinboro University of Pennsylvania. While earning her undergraduate degree, she conducted research in the Astronomy and Astrophysics Laboratory at the Pennsylvania State University, where she assisted in the development of a double pendulum for gravitation wave detectors for the LIGO (Laser Interferometer Gravitational-Wave Observatory) project. Jennifer has also conducted research in the areas of fluid dynamics at the Ohio State University where she focused on yield stress transition in gas fluidized sand.
It is important to note that each patent eligibility rejection raises its own challenges. Although individual tips will not necessarily fit all circumstances, the following are some items I have found to be useful in starting an analysis and in presentation to examiners:
Verbal discussions with an Examiner can sometimes be very beneficial. Some Examiners will be straight forward in what they (or the SPEs) are looking for in either claim amendments and arguments, so going this route first could reduce your work in the long run.
For each step of the Alice test, if the Examiner has improperly applied the wrong standard and has not properly followed the USPTO guidelines, you should explain what the proper standard is and present detailed arguments as to where/how the Examiner has failed to properly follow the USPTO guidelines.
Try to compare/equate your claims to a claim of the USPTO examples (e.g., 2019 PEG Examples 37-42 or October 2019 Examples 43-46). Because Examiners are trained on a basis of the PEG and these USPTO examples, this can significantly increase your chances in overcoming a 101 rejection.
If possible, reference portions of the specification when arguing under Step 2A, Prong I. For example, when presenting arguments against an Examiner’s assertion that the claims are directed to the “certain methods of organizing human activity” grouping of abstract ideas, argue that the claimed recitations (particularly those identified by the Examiner) do not fall within the scope of this grouping’s enumerated sub-categories (e.g., fundamental economic principles or practices, commercial or legal interactions, managing personal behavior, and relationships or interactions between people) and point to portions of the specification for support. When presenting arguments against an Examiner’s assertion that the claims are directed to the “mathematical concept” grouping of abstract ideas, argue that the claims are merely based on or involve a mathematical concept and that they are not directed to nor recite a mathematical concept itself (i.e., the claims are not limited to a mathematical concept). Be sure to reference portions of the specification in support. Finally, when presenting arguments against an Examiner’s assertion that the claims are directed to a “mental process,” argue that claimed recitations (particularly those identified by the Examiner) cannot be performed mentally or with a pen and pencil as they recite technologies that cannot be performed by human mental work. Reference portions of the specification in support.
Reference portions of the specification when arguing under Step 2A, Prong II that the claim recitations integrate any alleged abstract idea into a practical application. Explain the technological problems associated with conventional systems and methods (and point to portions of the specification – typically the background section). Then, explain how the claimed invention provides a technical solution to and improves upon the problems associated with the conventional systems/methods. Be sure to point to specific claim recitations (i.e., meaningful recitations) and reference specific portions of the specification that discuss the technological improvements.
Finally, reference the PEG/update when applicable in support of your arguments.
If possible, reference portions of the specification [both] when arguing under Step 2A, Prong I … and under Prong II when arguing that the claim recitations integrate any alleged abstract idea into a practical application.
Disclaimer – “The statements and views expressed are the personal opinions of the individual contributors. They are intended for general informational purposes only, and do not constitute legal advice, legal opinion, or the views of a contributor’s law firm.”
Want to teach the nitty-gritty needed to write office action responses to new patent prosecution attorneys. Read on to find out if there is an easy way to do it!
The Gap in Learning Patent Prosecution | ‘School’ and ‘On the Job’
Patent attorneys are among the most highly educated professionals out there. Simply to be eligible to sit for the patent bar exam, a would-be patent attorney must have demonstrable proficiency in a field of science or engineering. Many candidates come with industry experience and/or advanced degrees. The problem is, upon conclusion of law school they, like nearly all aspiring attorneys, are likely missing the most important ingredients for success. In fact, a 2015 survey by 5 Square Research found 95% of hiring partners and senior associates who supervise new attorneys believed recently graduated law students lack key practical skills at the time of hiring. This study focused on basic competencies in drafting, transactional skills and legal research, however the gap is greater for more technical, specialized fields. How many IP courses in law school begin to get into the nitty gritty of responding to an office action, for example?
Hiring New Attorneys – A Huge Investment
New attorneys are a huge investment. One law firm strategist calculated $295k as the average cost simply to make the initial hire when recruitment costs are factored in. Large law firms typically find that it takes three to five years to break even on a new hire. The first years can be a time of friction for new attorneys as well, making it even more important that measures are taken so churn is avoided, for the wellbeing of attorneys and firms alike. While such observations have inspired calls for curriculum reforms and certification programs to address the issue, much of the onus remains on the hiring firms, with firms investing an estimated average of $19k per new associate per year, often forming specialized programs to acclimatize new cohorts to life at the firm. New technologies can provide another, often overlooked way to bridge the gap, that was not available for previous generations. Historically law schools have been seen as intertwined with liberal arts education, whose purpose was to “provide the student with certain faculties of thought and expression” designed to allow the student to continue learning long after leaving the classroom.” Law students hone their critical thinking abilities through intensive hours spent analyzing statutes and cases. Even when combined with the most comprehensive knowledge of case law, the best a young attorney can do at this point is reinvent the wheel from first principles. The true education on how to practice as an attorney comes on the job, as is recognized in European practice under the EPO, where the qualification period is not complete until an attorney has finished three years of supervised postgraduate training.
The Need for Mentorship From Experienced Attorneys
Although no such formal requirement exists under the USPTO, the situation is not so different in the United States. On day one I was given an office action to respond to for a client because it needed to be done,” recalls U.S. patent attorney William Morriss of his training fifteen years ago, “A senior attorney reviewed my work. The same is done for new associates today.” While there is no substitute for the depth of experience provided by a solid mentor, guidance can be enhanced with supplementary resources. Such resources in turn lighten the load on mentoring on senior attorneys, who are often pushed to juggle multiple internal and external responsibilities. Over the years, Mr. Morriss started collecting examples of good responses in a folder and spoke to others who did the same. Firms may put together internal examples, but such collections are resource intensive to assemble, and not always kept up to date. These resources are valuable but tend to be limited to the particular examiners and types of rejections colleagues happen to have seen.
Patent Prosecution Software – Arguminer
Mr. Morriss, who was inspired partly by such observations to develop Arguminer, software specific to the patent prosecution cycle, has likened the on-the-job education new attorneys typically receive to induction to an artisanal guild. There is a certain irony in that we secure protection for the most cutting-edge inventions, yet are often reluctant to incorporate new innovations when it comes to our own practices. With the Arguminer software attorneys are able to get immediate feedback on the specific arguments that did or didn’t work. There is a lot going on behind the scenes. The software uses algorithms to automatically match the user’s uploaded rejection to examples with strong similarities to their situation and allows users to apply their own customized search filters as well. In the case of a brand-new associate, these examples can serve as a sort of template that can be quickly modified to match the situation at hand. More seasoned early career patent attorneys and agents, who have already achieved strong proficiency in drafting, have been able to leverage the Arguminer software to make stronger, more strategic responses on behalf of their clients and to exercise more confidence in their prosecution choices. Users may discover a competitive edge by uncovering responses prepared by a competing firm or draw upon their research to lend support to recommendations when counseling clients.
Novice to Experienced Attorney
The Arguminer software, developed by Mr. Morriss with IP Toolworks, is one example of how technology can allow for a smoother path from novice to experienced attorney. It is no substitute for experience, but it means that new attorneys can start their careers with the working knowledge of the most successful practitioners in their field already at their fingertips. From there it is up to them to apply their own judgement, knowledge and insight to do the best job possible on the task at hand.