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Next Steps for the USPTO’s § 101 Interim Guidance on Patent Eligibility

Next Steps for the USPTO’s § 101 Interim Guidance on Patent Eligibility published on 5 Comments on Next Steps for the USPTO’s § 101 Interim Guidance on Patent Eligibility

The Interim Guidance on Patent Subject Matter Eligibility is the authoritative source of the USPTO’s instructions to patent examiners for applying 35 U.S.C. § 101 to pending applications. This document was originally released in December 2014, and has been supplemented with refinements and updates that reflect changes in the law.

The latest update to the Interim Guidance (released in July 2015) provides insightful examples of patent-eligible subject matter, and the USPTO has solicited public comments about the updated document. Responsive to this solicitation and based upon earlier observations of trends in the application of § 101 by courts and examiners, the following recommendations are presented to promote the stabilization of this turbulent area of patent law.

The following recommendations for continuing the development of the Interim Guidance, based upon observations of trends in § 101 law, have been submitted to the USPTO for consideration (link to formal submission).

Recommendation #1: Require examiners to provide a § 101 analysis on the record in every patent application.

At present, § 101 challenges are routine and predictable in every instance of patent enforcement – as well as patents that are not being asserted, but that are challenged via inter-partes review. Because every patent faces the prospect of a patent-eligibility challenge, it is advisable that every patent application should feature an explicit patent-eligibility determination and analysis, both during examination and in the notice of allowance.

The patent-eligibility statement should be both case-specific (utilizing boilerplate language only as a framework for the analysis of the particular case under review) and detailed (a consideration of the claimed invention from a variety of angles, in the manner of the Supreme Court Alice decision).

Furthermore, examiners should acknowledge the successful traversal of a § 101 rejection with an affirmative statement of patent-eligibility. Cases that clear the § 101 determination by a wide margin should also include a positive statement of the examiner’s patent-eligibility conclusion, and may utilize the “streamlined” analysis provided in the Interim Guidance.

This requirement will provide the following benefits:

  • Applicants facing a § 101 rejection will have a clear statement from the examiner that can be reviewed for technical accuracy, legal sufficiency, and persuasiveness.

  • Patentees facing a patent-eligibility challenge during an infringement trial or inter-partes review can cite the explicit and detailed statement of the examiner that supports and informs the conclusion of patent-eligibility.

  • The collective output of patent-eligibility determinations by the USPTO examining corps will be amenable to analysis to identify patterns and trends in the application of § 101.

Recommendation #2: Encourage examiners to express positive opinions of patent-eligibility where applicable, and to work proactively with the applicant to resolve § 101 issues.

Currently, examiners are over-applying § 101 rejections for various reasons: as a discretionary rejection mechanism; to defer patent-eligibility determinations until other issues are resolved; or to push the § 101 issue up the chain of review to the supervisor and/or PTAB.

USPTO administration must act to reverse the cultural skew that favors § 101 rejections and discourages positive statements of patent-eligibility. This message should be conveyed through both the Interim Guidance and the administration’s general cultivation of examining corps culture, as follows:

  • Examiners should be encouraged to express opinions and honest conclusions about § 101. Supervisors should not set goals or quotas for allowance or rejection rates, but should instead review examiners’ rationale on a case-by-case basis.

  • Abuses of § 101 examination practice should be discouraged, and eventually identified and penalized as an examination error. Such abuses include: rejections that are completely generic and lacking in analysis; rejections that mischaracterize the technology; and the routine over-application (such as a near-100% rejection rate) or under-application (such as a near-0% rejection rate in a technology area that may frequently raise § 101 issues).

  • In the interest of compact prosecution, examiners should be encouraged to work proactively with the applicant to identify options for amendments that may put the claims into a form that satisfies § 101. For example, examiners should suggest subject matter from the specification or dependent claims that satisfy patent-eligibility.

Recommendation #3: Provide an abundance of examples of inventions and claims, with a detailed analysis and explanation of the patent-eligibility determination.

For both examiners and applicants, the most accessible and relatable material in the Interim Guidance is Appendix A of the July Update, which provides examples of patent-eligible subject matter and claims, an accompanying § 101 analysis, and in some cases a contrasting example of patent-ineligible claims. The examples provided in the July 2015 Update to the Interim Guidance significantly widened the base of subject matter upon which examiners and applicants rely as “safe harbors” of patent-eligibility.

It is therefore advisable that, of all the subject matter that might be added to the Interim Guidance, the USPTO should prioritize expanding this set of examples, drawn from both case law and hypotheticals, that have general applicability to a wide range of pending applications. Ideally, the Interim Guidance may evolve into an extensive library of examples of both patent-eligible and patent-ineligible subject matter.

It is further submitted that the USPTO should prioritize the identification of patent-eligible subject matter, claims, and analyses, for the following reasons:

  • The courts, including the PTAB, are already providing numerous examples of determinations of patent-ineligibility, and very few examples of patent-eligibility. While these opinions should be dutifully reported in the Interim Guidance, the USPTO should allocate its efforts in the opposite proportion in the interest of balance.

  • Examiners face a comparatively low threshold in asserting patent-ineligibility. Such determinations are primarily based upon the examiner’s conceptual review of the claimed invention, and rarely rely upon an example of patent-ineligible subject matter. On the other hand, both examiners and applicants closely follow the provided examples of patent-eligible subject matter.

  • In general, it is easier to draft patent claims and specifications toward a patent-eligible example, than to draft such claims and specifications in a manner that avoids a minefield of examples of patent-ineligibility.

Recommendation #4: Organize examples into two sets: subject-matter examples and claim examples.

Examiners’ rejections of claims under Alice typically reflect one of two determinations: either the disclosed invention is irreconcilably “abstract”; or the invention as claimed fails to satisfy § 101, but the disclosure provides further subject matter providing “significantly more” than the “abstract idea,” such that claim amendments are available that may recover the claims from patent-ineligibility. However, the typical § 101 rejection that generically cites portions of Alice fails to indicate which conclusion the examiner has reached.

It is recommended that the Interim Guidance articulate these distinct steps as an element of the Step 2B / “Significantly More” analysis. The Interim Guidance should urge examiners to consider whether the claimed subject matter is entirely “abstract,” or whether the claims could satisfy the § 101 analysis if recited with more technical detail (presuming sufficient specification support).

To reinforce this distinction, the Interim Guidance could organize its examples into two distinct types:

  1. Subject matter that is “abstract” per se, and cannot be claimed in any manner that will satisfy § 101; and

  2. Subject matter that is not “abstract” per se, but that is claimed in a manner that fails to provide patent-eligible subject matter.

It is further advisable that, as with several portions of the Interim Guidance, these examples should be presented as pairs of contrasting examples that respectively fail and satisfy § 101, with an analysis that emphasizes the critical distinction.

Finally, the Interim Guidance should encourage examiners to include a clear statement in the § 101 analysis that identifies one of these two scenarios as the examiner’s conclusion.

Recommendation #5: Provide classifications of technology areas according to “technical effect” probability.

The July 2015 Update to the Interim Guidance provides an interesting option to assist with examiners’ § 101 analyses. Example 15 demonstrates a computing technology for which patent-eligibility is “self-evident,” and the application of a § 101 “streamlined analysis” that bypasses the complexity of a full § 101 analysis. This example contrasts with other examples, in areas of innovation that have been identified as problematic for § 101 such as “method of organizing human behavior” and “fundamental economic practices long prevalent in our system of commerce,” for which a full § 101 analysis is required.

This contrast raises an interesting and valuable opportunity to classify general areas of technology that prompt varying levels of § 101 analysis. For example:

  • Some technologies may be identified as unlikely to raise a patent-eligibility issue, and may be good candidates for a “streamlined” § 101 analysis. Such technologies may include: hardware device drivers and control systems; encryption; data compression; error detection and correction; media encoding; process isolation; search techniques; and query processing.

  • Some technologies may be identified as possibly raising a patent-eligibility issue, and require a careful review of the claimed subject matter. Such technologies may include: social interaction; targeted advertising; product recommendations; and web-based services that do not directly pertain to technology.

  • Some technologies may be identified as likely to raise a patent-eligibility issue, and require a clear demonstration of a “technical effect” to counter an abstractness determination. Such technologies may include: financial transactions; risk hedging; contractual relationships; methods of playing games; naturally occurring compositions; and diagnostic techniques that predominantly involve mental evaluation.

Of course, these categories are not dispositive. Even technologies with self-evident application may nevertheless require a § 101 rejection if claimed in a conceptual and preemptive manner. Conversely, techniques in problematic areas may nevertheless present patent-eligible technology (as demonstrated by DDR Holdings, LLC v. Rather, these categories indicate the likely “self-evident” technical character of a technical field, and the depth of § 101 analysis that such technologies likely require.

These categories may be expanded and adjusted over time as further examples are provided by case law, and may eventually be presented as a spectrum of the “self-evident” technical character for different fields of technology.

Recommendation #6: Provide examples of boilerplate that provide a framework for various § 101 determinations.

Examiners’ development and use of boilerplate templates to articulate § 101 rejections have given rise to a host of problems. The number and variety of such templates have inexplicably proliferated, resulting in inefficiency and unnecessary complexity with no cognizable benefit. Moreover, the reduction of § 101 analysis to a “fill-in-the-blanks”-style template enables the substitution of decontextualized court statements and subjective conclusions for case-specific analysis.

The Interim Guidance can address these issues by encouraging examiners to use one of a small number of boilerplate templates to express various § 101 determinations. Each boilerplate may articulate a specific conclusion under § 101, such as:

  • The claims are patent-eligible under a streamlined analysis.

  • The claims are patent-eligible because they do not present an abstract idea.

  • The claims are patent-eligible because they present an abstract idea, but also provide “significantly more” than the abstract idea.

  • The claims are patent-ineligible because the subject matter is per se abstract.

  • The claims are patent-ineligible for failing to provide “significantly more” than an abstract idea, but the inclusion of additional detail (specifically identified in the office action) is likely to satisfy the requirements of § 101.

Additionally, each boilerplate template must include more than a slot to paste in claim language, but rather provides a framework for the examiner’s case-specific discussion of the issue – such as the “abstract idea” that the examiner believes the claims recite; the basis for characterizing additional limitations as “conventional”; and, for subject matter that is claimed in a conceptual manner and raises preemption issues, some examples of scenarios that the claims unreasonably cover that are within the claims but outside the applicant’s intended field of use. The provision of such boilerplate options in the Interim Guidance may both foster and compel examiners to provide extensive, case-specific commentary and analysis as the basis for their § 101 determinations.

Recommendation #7: Encourage the PTAB to identify examples of patent-eligible subject matter, and to designate such opinions as precedential or informative.

The Patent Trial and Appeal Board exhibits both a statistical tilt toward creating rather than resolving § 101 issues, and a refusal to identify precedential opinions. As the USPTO’s most authoritative and detailed source of § 101 determinations – with an annual production of 10,000 opinions, of which 50% include a determination of § 101 patent-eligibility – the PTAB’s absence from the Interim Guidance reflects a lost opportunity to contribute to the stabilization of § 101 law.

It is recommended that the Office of Patent Legal Administration work with the Patent Trial and Appeal Board to identify a significant number of ex-parte appeals that present prototypical examples of patent-eligible and patent-ineligible technologies and claim styles. The citation in the Interim Guidance of examples that are founded upon real applications and claims, resulting in a full legal determination, provides inherently more reliable material than hypotheticals devised solely by USPTO administration.

Going forward, the PTAB should be urged to identify select cases – such as five decisions per month – that clarify the patent-eligibility of various technology areas and claim styles, which can be periodically published in the Federal Register and incorporated into the Interim Guidance. Furthermore, the Office of Patent Legal Administration may request the PTAB to identify, and designate as precedential, ex-parte appeals involving issues in particular need of clarification – such as those involving technologies in the patent-eligibility “gray zone” like social networking technologies.

It is possible that the PTAB’s reluctance to designate precedential decisions derives from a reluctance to expose its assertions for reversal by higher courts. However, this area of law is widely recognized as dynamic, and reversals of the PTAB can be described in the Federal Register as the correction of previous § 101 decisions. Moreover, by exacerbating rather than reducing the prevalence and uncertainty of § 101 issues, the PTAB fails to reduce the rate of ex-parte appeals, and by extension the PTAB’s unresolvable backlog and pendency. Participating in the stabilization of § 101 is therefore in the PTAB’s best interests.


“Subject matter that is “abstract” per se, and cannot be claimed in any manner that will satisfy § 101”.

I am unaware of any basis for an examiner to categorically say an application is ineligible on the basis of Step 2A (“is it directed to an abstract idea?”) of the Alice test. Does this really happen?

The abstract idea of “adding integers”, combined with a specific enough algorithm or device should constitute significantly more. The terms of the Alice test clearly do not allow for skipping 2B and proceeding to a rejection. I would think such a rejection would make for a very easy appeal.

Oh, I agree with you – Step 2B isn’t skippable even if Step 2A is satisfied – but that’s not my argument.

My point is whether there is any discussion of technology in the specification (but not yet in the claims) that could salvage the application.

Here’s a contrasting example pair:

  • The independent claims in Alice; and
  • An alternate version of the independent claims in DDR Holdings that did not recite the technology, but only recited the concept – something like: “A method of configuring a server to present content from a third party, the method comprising: configuring the server to present the third-party content with look-and-feel that matches the look-and-feel of the hosting page.”

As examination happens today, both independent claims would receive a substantially identical Alice rejection: “The claims are directed (Step 2A) to an abstract idea, and (Step 2B) fail to provide any elements that add ‘significantly more,’ and therefore the claims are not patent-eligible under 35 USC § 101.”

My point is that these cases present an important difference, because the specification in DDR Holdings does recite an actual technological problem and a corresponding technological solution. In addition to the pro-forma Alice rejection of those hypothetical claims, the office action should identify the portions of the specification that the examiner believes may satisfy § 101. (Even better if the examiner can point to dependent claims that include such elements.) By contrast, in Alice, the office action could indicate that the examiner has reviewed the specification and finds no further technology that may confer patent-eligibility.

That’s the critical distinction that, I believe, examiners could be explicitly reciting. They aren’t, and the Interim Guidance should encourage them to do so.

Whether the claims in Ex Parte Bak and Ex Parte Base have problems, and as you note, the do appear to have problems, I am much more bothered by the PTAB making factual determinations in both cases based on no evidence and barely any reasoning.

Thanks to the Supreme Court’s Alice decision, we are no so far down the rabbit hole in Alice in Wonderland that the Queen of Hearts, i.e., the PTAB, can have someone’s head chopped off, i.e., can declare an applicant’s claim patent ineligible under 35 USC 101 and therefore unpatentable, for any reason it wants to without any due process.

This is not how the law is supposed to work in the U.S. This is not how an administrative agency is supposed to reach its decisions under the APA.

One of the real evils of the shift to more subjective standards in Patent Law that you have written about, is that the shift to more subjective standards allows decision makers such as Examiners, the PTAB, District Court judges, Federal Circuit judges, Supreme Court justices, etc. who choose to be lazy to take shortcuts and not do the hard work of conducting the proper fact-based and statutory-based analysis to determine if a claim should be patentable.

For example, had the Supreme Court focused on the 35 USC 112 problems with the claims in Mayo and Alice instead of legislating from the bench by adding requirements to 35 USC 101, I think the entire patent system would have been better served. To me, the biggest problem in recent years with patent quality in the field of computer-related and software-related technologies has been the number of patents that have been issued with claims that do not appear to be enabled under 35 USC 112. Just look at the number of enablement problems people could find with Cuban’s hoverboard patent and that was not a particularly long or complicated patent.

With respect to the PTAB decisions regarding 35 USC 101 I would add the following recommendation: Remind the PTAB that they they are supposed to comply with the due process requirement of the U.S. Constitution in reaching their decisions.

Two recent due process attrocities by the PTAB with which I believe you are familar:

The decision in Ex Parte Bak


the decision in Ex Parte Base:

In Ex Parte Bak, the PTAB found that the “scheduling a meeting” was an “abstract concept” based on a definition of the term “abstract” known only to the members of the PTAB and not provided to the application. I am aware of no dictionary or legal definition of the term “abstract” that makes scheduling a meeting “abstract.”

In Ex Parte Base, the PTAB held, based on absolutely no evidence provided by the PTAB, that a claimed method that on its face appears to only be capable of being performed by a computer or other electronic device, were “mental process steps” which could be performed by the human mind, or by a human using a pen and paper.

I would love to hear the members of the PTAB who made these decisions explain how the decisions complied with the due process requirements of the U.S. Constitution given that these decisions are not only based on no evidence provided by the PTAB and appear on their face appear to be based on determinations of fact that are incorrect.

Rational: As usual, your comments are well-taken.

From my perspective, both cases present a disappointing lost opportunity: both cases involve actual technology, but the claims are inadequate. The fundamental technique in both cases could have been called out with claims that better recite the functionality of the computer.

Consider Ex parte Bak:

1. In a network of computer controlled user interactive display stations, a method for the scheduling of meetings on the calendars of invitee users comprising:

prompting an inviter, at a sending display station, to enter into an invitation a predetermined set of general attributes for the scheduled meeting;

enabling each invitee to predetermine a set of invitee- specific attributes applicable to each invitation; and

enabling each invitee to prioritize each predetermined general attribute and each invitee-specific attribute to a numerical priority level to determine the priority of said meeting on the invitee’s calendar.

This claim raises two serious problems. First, the claims could be performed by a user sitting in front of Gmail and Google Calendar. And second, “enabling” is a poor claim term – it’s a combination of “permitting” (e.g.: “I’m going to permit a user to tell me something… doesn’t mean I actually do anything with it”), and a result (e.g.: in Mark Cuban’s vehicle patent, the control logic enables the vehicle to be self-balancing… without providing any detail as to how).

These types of problems – also applicable to Ex parte Base – are regrettably common. This was the motivation for recommendations #4 and #6: encouraging examiners to distinguish between subject matter that is doomed to patent-ineligibility, and subject matter that could be patent-eligible if claimed a little better.

As you alluded above, this adjustment of § 101 analysis, and my recommendations more generally, are also applicable to the PTAB. Both Ex parte Bak and Ex parte Base languished at the PTAB for two years after briefing – and were then summarily dismissed with only a few paragraphs of commentary, most of which is a regurgitation of excerpts from Alice. This is a night-and-day contrast with the Supreme Court’s 11-page, case-specific analysis of Alice Corp.’s claims. (Of course, not every case requires extensive commentary on the level of Alice – but perhaps the gap should not be as massive as it is.)

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