In the face of ongoing uncertainty about patent eligibility under U.S. law, patent professionals face the nearly impossible task of future-proofing their applications against rapidly evolving rules and decisions. Luckily, guidance issued by the United States Patent and Trademark Office (USPTO) has provided much needed clarity on the otherwise opaque rules of patent subject matter eligibility.
Writing patent applications to demonstrate computer improvements in view of the USPTO 2019 Revised Subject Matter Eligibility Guidance and applicable case law is incredibly helpful in ensuring smooth prosecution.
Claim features which recite a technological improvement are relevant to demonstrating subject matter eligibility of the claims at different stages in the Alice/Mayo two-part test. For example, in DDR Holdings v. Hotels.com, the court found that improvements to the functioning of a computer are relevant to showing that additional elements in a claim provide “significantly more” than an alleged judicial exception under Step 2B of the Alice/Mayo test.
Similarly, the USPTO has issued guidance stating that an “important consideration to evaluate when determining whether the claim as a whole integrates a judicial exception into a practical application is whether the claimed invention improves the functioning of a computer or other technology.”
Clearly reciting such technical improvements can be beneficial when prosecuting applications before the USPTO and when litigating granted patents. Demonstrating technological improvements has, in many cases, proven to be a key factor in redeeming patent claims that would otherwise have been found subject matter ineligible.
Additionally, in the authors’ anecdotal experience, computer-based applications in which the technical improvements are clearly outlined are less likely to be rejected under 35 U.S.C. 101 and, when they are rejected for lack of subject matter eligibility, the technical improvements can be easily referenced in order to overcome the rejection.
Proactively writing patent applications to clearly show computer improvements can be broken down broadly into two parts:
Draft the specification such that a person having ordinary skill in the art would recognize a computer improvement.
Draft the claims to include features that contribute to the computer improvement
The USPTO has acknowledged that this approach is relevant to analyzing whether a claimed invention provides a computer improvement such that it is not directed to a judicial exception.
For drafting the specification, a person having ordinary skill in the art should be able to understand the computer improvement from reading the specification. This does not require explicitly describing the improvement. However, providing an explicit description of the improvement may help the reader understand the technical nature of the improvement.
As an example, the specification could state “The disclosed embodiments provide techniques that reduce the number of remote access attempts. Reducing the number of remote access attempts reduces network bandwidth consumption.” A person having ordinary skill in the art would clearly understand that reducing remote access attempts would reduce bandwidth consumption.
For applications that have been drafted without explicitly describing the technical improvement, it is still possible to demonstrate how a person having ordinary skill in the art would recognize a computer improvement using external evidence. As an example, the October 2019 Revised Subject Matter Eligibility Guidance notes that a declaration by an expert can be used to show how a computer improvement would be recognized. Thus, similar arguments may be available to overcome subject matter eligibility rejections even without these explicit descriptions.
For drafting the claims, the reader should be able to connect the claimed features to the computer improvement. In the above example of reducing network bandwidth, this would involve reciting the features that cause the number of remote access attempts to go down in the claims.
Much like describing the computer improvement, explicitly describing how the claimed invention is linked to the computer improvement may help illustrate how the claims provide the computer improvement. This explicit description could easily be referenced during prosecution or litigation to demonstrate subject matter eligibility by virtue of a technology improvement.
In summary, communicating how your patent claims reflect a computer improvement can help significantly during prosecution and beyond. This connection can be illustrated by: (1) drafting the specification to clearly describe what the computer improvement is, and (2) drafting the claims to include features which tie the invention to the computer improvement. Patent professionals should think about how they can incorporate this information into their applications so that they can reference the application’s own improvements when the subject matter eligibility of the claims is in question.
