Overcoming Abstract Idea Rejection with Targeted Patent Application Drafting
The United States Patent and Trademark Office (USPTO) frequently rejects claims as abstract ideas. This is a grave concern for applicants who invest resources in Research and Development (R&D) areas to secure their innovation. The best way to approach this problem is through targeted patent application drafting. It enables patent drafters to anticipate the art unit (AU) that will examine the application to optimize the scope of claims for hassle-free approval or grant rate.
Targeted patent drafting can help save critical resources for the applicant by taking into account potential abstract idea rejection at the time of drafting. Read on to learn about art units, abstract idea rejection, and targeted patent application drafting in detail. You will also get to know how Sagacious IP’s patent experts draft foolproof applications to avoid office action or abstract idea rejection.
Understanding Abstract Idea Rejection
The Manual of Patent Examining Procedure (MPEP) § 2106 of patent laws followed by the USPTO broadly includes two criteria for subject matter eligibility. First, the claimed invention must fall under one of the four categories, i.e., process, machine, manufacture, and composition of matter. Secondly, the claimed invention must not be directed to any of the judicial exceptions, including an abstract idea, natural phenomena, or law of nature.
Among the above judicial exceptions, the most frequently encountered is the abstract idea. In the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), the USPTO has classified abstract ideas into three categories – a mental process, a mathematical concept, or a method of organizing human activity.
Although a few art units may give the abstract idea rejection in a majority of their cases, their explanation for the same follows the pre-established 2-step process and takes references from previous court cases.
The USPTO has provided substantial material to both the examiners and the attorneys to help them comprehend the contours of this issue. While one may not agree with the examiner’s rationale, at least there is reasoning one can argue with. In addition, some examiners look for and recommend material in the specification that attorneys can use to overcome abstract idea rejection.
The classification of patents plays a critical role in directing an application to the relevant art unit. Our next section discusses the same. It also highlights the classification system utilized by the USPTO.
On January 1st, 2013, the USPTO replaced the United States Patent Classification (USPC) system with the Cooperative Patent Classification (CPC) system jointly developed with the European Patent Office (EPO).
A primary classification (equivalent to an original classification) or a secondary classification (equivalent to a cross-reference) may be given to publications of patent applications. The selection of the primary classification for the publication is based on the application’s core innovative concept. The primary inventive concept of the patent application is determined using the claims as a guide.
A non-provisional application is first grouped into one of the classified categories, and then an art unit mapped to one of these categories is assigned to it. Among the diverse criteria for allotting one of the classifications is technology; hence, the given category/art unit is potentially predictable.
Technology Centers and Art Units
The USPTO has grouped examiners with specific scientific and technical domain expertise into technology centers. Each technology center deals with patent applications belonging to a particular technical domain. These technology centers are further divided into art units (AUs) organized by major types of inventive art within a scientific or technical domain. AUs are organized into group art units (GAUs), which are even more specialized and granular teams of examiners. Group art units involve examiners who scrutinize patent applications. All applications are docketed to examiners based on specific subject matter classifications of a particular GAU.
Patent applicants and drafters must be familiar with technology centers, art units, and group art units. This helps one understand the types of inventions within each scientific and technical domain, and estimate the time it takes for the final decision on inventions’ patentability. It also allows one to deliberately direct a patent application to a specific AU.
Customised Patent Application Drafting and Grant Rates
Many patent prosecutors and practitioners believe that the chances of abstract idea rejection depend on how examiners in different art units apply the Alice decision. Interestingly, after the 2019 PEG, the grant rate has improved in many of the art units. For instance, allowance rates have improved in hardware-based art units as well as other non-business-related art units.
However, several art units still maintain a high bar for patent subject matter eligibility, undermining innovators’ ability to secure rights and investments in their innovations. Accordingly, it is advisable to stay out of “business methods” art units (such as 3600-related units) by drafting patent applications and claims in a specific way. This is termed “Targeted Patent Application Drafting,” wherein the patent drafter anticipates the art unit while preparing the application’s claims and scope.
Approach for Targeted Patent Application Drafting
Patent specification plays an instrumental role during patent prosecution. Thus, patent practitioners should draft considering potential abstract idea rejection. Additionally, they should arm their specification to counter any office action/abstract idea rejection. The office action response alone does not help when the specification fails to highlight the technological advancement of the alleged abstract ideas. The support from the specification provides credibility to arguments, and the examiner often gives due weightage to the response.
After repeatedly receiving abstract idea rejection from a specific art unit, it is wise to change the scope of the claims to target a different art unit. This is possible by filing a continuation application with a different scope of claims to target a specific art unit with a better grant rate. However, this is only possible if the specification has been loaded with enough ammunition to substantiate the arguments in the office action response.
Why Choose Sagacious IP for Patent Application Drafting and Prosecution
Sagacious IP’s patent preparation and prosecution service helps businesses minimize costs and expedite patent examination for an early grant. Our expertise lies in steering a patent application towards the most favorable art unit to enhance the likelihood of grant. Expert patent drafting professionals prepare patent applications not only to meet patent office requirements but also ensure the broadest possible coverage by optimizing ideas. They work in tandem with subject matter experts to ensure that the application is accurate from all perspectives.
A patent drafter should anticipate the art unit and avoid AUs that have poor grant rates during application drafting. This can help reduce the prosecution cost, achieve an early grant, and avoid abstract idea rejection. Patent applicants can also try to direct their application to a different art unit through a continuation application with a different scope of claims.
Sagacious IP’s patent application drafting service can help you expedite the grant process and avoid AUs with low grant rates. We have over 12 years of experience with a team of 350+ patent experts covering 30+ technology areas. Click the link above to know more.
– Gaurav Gupta (ICT Drafting and Prosecution) and the Editorial Team