Since the Supreme Court’s Alice decision, the Patent Office has struggled with training examiners to properly analyze claims under section 101, and set forth well-reasoned patent-eligibility rejections. The Patent Office issued interim eligibility guidelines to examiners in 2014 and updated those guidelines in 2015. However, all too often, practitioners still received boilerplate rejections of software-related claims. A new memo to the examining corps aims to improve the quality and consistency of examination by more clearly formulating the content that must be included by an examiner in a section 101 rejection. The new guidelines provide practitioners with new tools to overcome section 101 rejections and should reduce the expense of unnecessarily protracted prosecution.

In the first step of the Alice analysis, the memo clarifies that the examiner must identify specific claim limitations and explain why those claim limitations set forth a judicial exception (e.g., an abstract idea). This should reduce the all-too-common occurrences of boilerplate rejections in which an examiner recites the entire software-related claim and then concludes that it is directed to an abstract idea.

The guidelines further attempt to tie the examination process more closely to the developing section 101 case law. The examiner must specifically identify the abstract idea as it is recited in the claim, and explain why it corresponds to a concept that the courts have identified as an abstract idea. Importantly, the memo explains that examiners “should not go beyond those concepts that are similar to what the courts have identified as abstract ideas.” It further explains that examiners should be familiar with any cited decision relied upon in making a rejection to ensure that the rejection is reasonably tied to the facts of the case to avoid relying on the language taken out of context. This clarification of the requirement that examiners must follow, and not extend, the developing case law, provides another tool for practitioners steeped in the recent Federal Circuit developments to rebut unwarranted claim rejections.

Turning to the second step of the Alice analysis, a rejection must identify any additional elements recited in the claim beyond the judicial exception (e.g., abstract idea) and explain why those elements, individually and in combination, do not add significantly more to the exception. The memo calls out the importance of the examiner explaining the rationale underlying his or her conclusions so that an applicant can effectively respond. This heightened requirement for explaining the basis for a rejection under the second step of the analysis should further reduce the number of meritless rejections, and allow applicants to meaningfully respond when rejections are issued.

Along with these new examination guidelines, the Patent Office supplemented the patent eligibility examples it provided with its July 2015 update. The guidelines clarify that the examples should not be used as a basis for a subject matter eligibility rejection because they are hypotheticals and do not carry the weight of law. The guidelines also clarify that applicants should not be required to model their claims or responses after the examples to attain eligibility. However, the guidelines explain that it is acceptable for applicants to cite an example in support of an argument for finding eligibility. Allowing applicants to refer to the examples to support eligibility arguments may provide a significant benefit, given the lack of court decisions finding claims eligible post-Alice.

These guidelines do not alter the law of patent eligibility. But they should provide many benefits to patent applicants attempting to overcome section 101 rejections. They should create a more complete record in the first office action raising a section 101 rejection, and allow for applicants to effectively respond. Thus, if followed, these guidelines should reduce the expense of unnecessarily protracted prosecution and result in more efficient prosecution of patent-eligible claims.