Patent Claim Strategies

𝗧𝗵𝗲 "𝗘𝘅𝘁𝗲𝗿𝗻𝗮𝗹" 𝘃𝘀. "𝗜𝗻𝘁𝗲𝗿𝗻𝗮𝗹" 𝗦𝘁𝗿𝗮𝘁𝗲𝗴𝘆 𝗳𝗼𝗿 𝗢𝘃𝗲𝗿𝗰𝗼𝗺𝗶𝗻𝗴 𝗣𝗮𝘁𝗲𝗻𝘁 𝗘𝗹𝗶𝗴𝗶𝗯𝗶𝗹𝗶𝘁𝘆 𝗥𝗲𝗷𝗲𝗰𝘁𝗶𝗼𝗻𝘀 When analyzing the USPTO's patent eligibility guidance under MPEP 2106, I've found it helpful to classify the various bases for determining subject matter eligibility into two broad categories: "external" and "internal." • 𝗘𝘅𝘁𝗲𝗿𝗻𝗮𝗹 factors focus on the purpose, function, or real-world application of the claimed invention. These include considerations like "improvements to the functioning of a computer," "practical application," and "applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment." • 𝗜𝗻𝘁𝗲𝗿𝗻𝗮𝗹 factors focus on how the claimed invention achieves its purpose, such as the specific steps it performs or particular mechanisms it contains. These include considerations like use of a particular machine and transformation into a different state or thing. Understanding this distinction can be incredibly powerful when responding to patent eligibility rejections. Instead of confronting an examiner's rejection head-on, one strategy I've found to be useful is to shift the discussion, aikido-style, from one type of factor to another, by responding to an external rejection with internal arguments, or vice versa. For example: • If an examiner rejects your claim with the external argument that it's merely "directed to an abstract idea without practical application,” try pivoting to an 𝗶𝗻𝘁𝗲𝗿𝗻𝗮𝗹 factor, such as by arguing that your claim makes use of a particular machine or transforms subject matter into a different state or thing. • Conversely, if facing a rejection based on the 𝗶𝗻𝘁𝗲𝗿𝗻𝗮𝗹 argument that your claim "merely recites generic computer components performing generic functions," try redirecting attention to 𝗲𝘅𝘁𝗲𝗿𝗻𝗮𝗹 factors by showing how the claimed invention "improves the functioning of the computer itself" or integrates that alleged generic computer components into a patent-eligible practical application. This strategic approach allows you to avoid directly rebutting the basis for the Examiner's rejections, while still firmly grounding your arguments in the USPTO's guidance. It's like sidestepping a charging opponent and counter-attacking from a different angle, rather than meeting them head-on. Next time you face a Section 101 rejection, consider whether the examiner's reasoning is primarily based on 𝗲𝘅𝘁𝗲𝗿𝗻𝗮𝗹 or 𝗶𝗻𝘁𝗲𝗿𝗻𝗮𝗹 factors, then craft your response using factors from the other category. You might find that this approach shifts the focus of the discussion and can avoid the kind of repeated butting of heads that can drag out prosecution and delay allowance of valuable patents. #patents #patenteligibility #intellectualproperty

How to Get Broader Patent Claims—Without Bullying the Patent Examiner 💡🔒🤝 Some people claim you can’t get broad patent protection because examiners only allow narrow coverage that’s easy to design around. 🔒❌➡️ This viewpoint often comes from litigators who dabble in patent prosecution and see the process as purely adversarial. ⚖️🤔 In my experience, you can secure broader claims without waging war against the Patent Office. 🤝🏢 Here are four strategies: 📚🎯 1) Start with a Thorough Prior Art Search 🔎📖 Don’t just look for a “yes/no” on novelty—dig deep to pinpoint exactly what your invention does that the prior art does not. 🤔💡 When you know the true point of difference, you can craft broader claims that clearly stand apart from existing solutions. 🚀✅ 2) Be Your Own Lexicographer 🏷️💬 If you’ve created something entirely new, why not coin a term for it? 🆕🤔 Defining a new concept in your specification—and carrying that definition into the claims—forces the examiner (and any challengers) to confront your invention on your terms. 🤝💡 It highlights your invention’s novelty in a way generic language never could. 💯✨ 3) Opt for Clarifying, Not Narrowing, Amendments ✍️📝 When faced with prior art rejections, don’t just concede scope and shrink your claims. 📉❌ Instead, revise your language to clarify exactly how your invention differs from the cited art. 💡🔬 The result? Your coverage remains broad, but it’s easier for the examiner to see how you’re innovating. 🏆🤝 4) Be Honest—Don’t Get Greedy 🤷♂️💡 Sometimes, the real issue is that the invention isn’t as novel as originally hoped. 🤔💭 If you’re trying to claim ground you didn’t truly invent, you’ll end up battling the examiner. ⚔️👀 Accept the real scope of your invention and focus on valid, defensible claims. 🏛️✅ After all, the best patent attorneys aren’t magicians—bigger ideas simply lead to better, broader patents. 🪄🧙♂️ What do you think? Have you found ways to secure broader patent coverage without antagonizing your examiner? Let’s discuss! 💬👥

I just saw a job posting for an in-house patent role where a called out skill is "addressing rejections under Section 101." This is clearly a pain point for the company that is looking for a patent prosecution person. Maybe it shouldn't be that big of one. FWIW, I have never had to appeal or abandon an application because of a Section 101 rejection. When crafting patent strategies, I often dive into the file histories to see how examiners are reviewing cases that may appear contextually similar to what my clients are doing. I do this because I want to select strategies that have been successful and reject those that have not been. (Seems obvious to say this, but it's rarely done in practice for reasons beyond the scope of this post.) While looking at prosecution histories, I see a good number of Section 101 rejections issued to applications directed to "software processes." This means that I get to Monday Morning Quarterback other's prosecution strategies when crafting strategies for my own clients. I see lots of Section 101 rejection responses that I know will be losers. And, I also often know what (usually) minor claim amendment needs to be made to fix the Section 101 rejection so that the prior art rejections can be addressed. In some cases, there are no prior art rejections, which means that the claims will be allowable if the Section 101 rejection is overcome. There's often "One Neat Trick" that will result in removal of a Section 101 rejection--and if you include this One Neat Trick in your claims as filed, you may be able to avoid a Section 101 rejection all together. While I don't want to give away all of the secrets that enable my clients to get broad patent protection quickly at relatively low cost, Non-Patent Types need to understand that, in many cases, it shouldn't be a mystery why their company's patent applications are being rejected under Section 101. Here's the One Neat Trick to making it more likely that your claims allowed: add an implementation step. Make the claims actually DO SOMETHING. That's it. This addition likely won't be limiting to your business model because you are actually doing something at the end of the process. If you didn't, your process wouldn't add any value to your customer's business and they wouldn't pay you to help them in the first place. Of course, the Devil's in the Details on whether this will work for every software-related application in context. The caselaw can also be ambiguous to interpret, so there's lots of subjectivity from examiners on application of Section 101. Nonetheless, time and again when reviewing file histories of "software patents" I see an absence of an implementation step as the reason why applicants get into protracted prosecution and, often, the cases end up being abandoned. Since it likely won't matter to your claim scope from a business model coverage perspective, you should just go ahead--add one and see what happens. #ipstrategy #patents #patentstrategy