How to Overcome Alice–Based Section 101 Patent Rejections

How to Overcome Alice–based Section 101 Patent Rejections


As patent attorneys know all too well, the U.S. Supreme Court’s 2014 decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l had a dramatic impact on the prosecution of patent applications for computer software technologies. The issue in the case was whether certain patent claims on an electronic escrow service for facilitating financial transactions pertained to ideas that were ineligible for patent protection. The Court held that the claims were just an “abstract idea” and that implementing those claims on a computer was not enough to turn the idea into something that could be patented, which lead to Alice-based Section 101 patent rejections.

Since the Alice decision, courts have often invalidated software patents at an early “motion to dismiss” stage, casting a dark cloud over patent protection of computer-implemented inventions.

Quinn and Root explained that the Alice decision laid out a new test for patent validity under Section 101 of the U.S. Patent Code, making it difficult to prove to the USPTO that software claims are more than an abstract idea. Unfortunately, the Alice decision did not define the term “abstract idea” – an omission that predictably led to litigation.

To clarify the implications, the USPTO issued guidance explaining how its patent examiners should evaluate claims for patent subject matter eligibility under Section 101:

  • (1) Is the claim directed to a process, machine, manufacture, or composition of matter?
  • (2a) Is the claim directed to a law of nature, a natural phenomenon, or an abstract idea? If yes, then
  • (2b) Does the claim recite additional elements that amount to significantly more than the judicial exception?

In the 2016 decision Enfish, LLC v. Microsoft Corp. et al, the Federal Circuit revived the hopes of software patent owners. The Federal Circuit upheld the validity of an Enfish patent, citing the test laid out in Alice, and writing that there is “no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice.”

“The Supreme Court has steadfastly refused to define the term ‘abstract idea’ even though it is essential to their extra-judicial test for patent eligibility,” said Quinn, in a blog post. “The Federal Circuit, seemingly uninterested in bringing any certainty to patent laws or Supreme Court pontifications, has said that if the Supreme Court does not need to labor to define the term ‘abstract idea’ then neither do they. See Enfish v. Microsoft.”

Lessons learned from recent Federal Circuit cases for patent drafters include:

  • Describe in detail the advantages of your disclosure over the prior art so it’s clearly functional and not abstract
  • Align the title used in your filed application with the broadest patent claim to make sure that it’s tied directly to those pending claims
  • Specify a practical application for your disclosure in the patent claims in order to demonstrate it’s more than just an abstract idea.

Intellectual Property tools, such as LexisNexisPatentOptimizer®, to help patent drafters choose their words more wisely to prevent Section 101 patent rejections and other types of rejections. These tools can be used to flag prior usage of certain terms, identify on-point case references, suggest alternative terms for the application, alert you to terms or phrases that could be problematic in the courts and identify and rectify any claim anomalies. Created by patent attorneys for patent attorneys, PatentOptimizer® streamlines patent analysis and serves as an important Section 101 quality control check when drafting patent applications.

Learn more about PatentOptimizer.

Access the case study to see how one firm saves time and easily develops well-tailored, concise, high-quality patent applications. 

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