Print Page   |   Contact Us   |   Sign In   |   Register
Community Search
2015 Winter Newsletter - Slaying the Jaberwock of Patent Eligibility — Patent Practice Issues ...
Share |



  Winter 2015

  BPLA Newsletters

 Volume 45, Issue 3

Slaying the Jaberwock of Patent Eligibility — Patent Practice Issues and Suggestions in a post-Alice World

by Daniel Lev, Ph. D., Pierce Atwood, LLP and Reza Sadr, Ph.D., Pierce Atwood, LLP

Daniel Lev, Ph.D.


Reza Sadr, Ph.D.





What claims are patent-eligible under Section 101 of the Patent Act? With the recent spate of Supreme Court cases addressing patent eligibility, this threshold question has turned into a formidable hurdle for prosecuting and litigating some types of patent applications. See, e.g., Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Ply. Ltd. v. CLS Bank International, et al., USPTO memorandum dated June 25, 2014 (available at; see also, McRO, Inc v. Activision Publishing, Inc., Civ. No. CV 14-336-GW (C.D. Cal. 2014). The patent bar is left wondering how to navigate these recently erected barriers. In particular, academicians and practitioners are pondering the meaning of some fundamental questions invoked by these rulings, questions such as what is a “law of nature,” what is an “abstract idea,” or — for that matter — what is an “inventive concept.” The law of patent eligibility is certainly in flux.

We, patent practitioners, however, do not enjoy the luxury of watching from the sidelines to see how the law develops; instead, every day our clients require us to draft strong patent applications that cover their inventions. To that end, we need to constantly revisit and revise our best practices to comply with the yet unsettled law.

In this article, we offer some preliminary thoughts on how to capture the “inventive concept” when drafting patent applications that may otherwise be deemed directed to an “abstract idea” or a “law of nature.” We present these thoughts as small contributions to the ongoing discussion in the patent bar about how to balance ourselves on these shifting grounds. Some of these thoughts resulted from our discussions with other members of our community, and we look forward to hearing more about how others are approaching the same issues. 

In Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347, 573 U.S. ___ (2014), the Supreme Court re-enforced the two-step framework that it had previously formulated in Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S.Ct. 1289, 566 U.S.___ (2012). The framework is for determining whether or not a claim is directed to patent eligible subject matter, as codified in 35 U.S.C. § 101. The first step asks whether the claim is directed to subject matter that the judiciary has excluded from the expansive scope of section 101. In Mayo and Alice, the Court applied to the claims at issue the judicial exclusions for laws of nature and abstract ideas, respectively.  If the first question is answered affirmatively, the second step then asks whether the claim additionally includes some “inventive concept.”

Patent practitioners are thus tasked with drafting patent applications that address the above questions successfully. But they should also take heed:  good drafting skills are turning into expletives.  In both Mayo and Alice, the Court warned against falling for a “draftsman’s art” that may try to overcome patent ineligibility by using specific claim language. So if the draftsperson does a good job by reciting claim elements that should bring the claim within the territory of patent eligible subject matter, the court may still reject this effort and look at the drafter’s artfulness with suspicion. On the other hand, if the drafter unnecessarily narrows a claim or uses ambiguous recitations, the claim is interpreted against the drafter because “the patent drafter is in the best position to resolve,” such issues. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 572 U.S. ___ (2014). The draftsperson never seems to be able to win.

Under such circumstances, we ask, what are some drafting rules that flow from the present state of the law of subject matter eligibility? Here, we propose a few suggestions. We have formulated some of them as practical drafting techniques and some others as specific hypothetical amendments to the claims of Prometheus or Alice. These suggestions are preliminary, and they are subject to modification or refutation as the law evolves. These practical suggestions are to further the discussion. They are intended to, and might, increase the chances of such claims overcoming their subject matter ineligibility problems. Because the law is still unclear, however, there is no guarantee that these amendments would actually serve that purpose either at the Patent Office or in a court. Moreover, the amendments may not be feasible for other reasons — for example, some amendments may narrow a claim to an extent that limits the claim’s practical enforceability, or some amendments may not be supported by the specification.


Possible amendments to Alice’s claims[1]

a)      Amendments to reduce the risk of being interpreted as merely directed to an “abstract idea”

The Court is concerned about broad claims that monopolize any meaningful application of the abstract idea. A practitioner, in collaboration with the inventor(s), may identify different practical ways that one can implement the general idea behind the invention (such as mitigating the risk of settlement in Alice’s patent) and draft claims directed to a subset of those ways and thus do not preclude all of them.

Further, a practitioner may attempt to preempt characterization of the application as directed to a general abstract idea by foreseeing such possible characterizations and addressing them. The application may, for example, provide clues about the general idea behind the invention, and add further clues about the specificity that the invention adds to those general ideas. Most practitioners have, of course, moved away from specifically characterizing the “invention”. So they may provide the above clues not for the “invention” but for some embodiments. The above approach may also apply to the claim language, either in the preamble (see the one suggestion below), or in the body (see ensuing suggestions).

·        Example for amending the preamble of Alice’s claim 33: A computerized method of exchanging obligations utilizing computerized coordinated communications via secure components

·        A practitioner may include some means-plus-function (MPF) claims that are supported by detailed structures explained in the specification. We note, however, that MPF claims are construed as limited to the corresponding structure disclosed in the specification (and equivalents thereof) and, thus, may be disfavored.


b)      Amendments that add an “inventive concept”

An “inventive concept,” according to the Court, may amount to limitations that tie the claim to a technology, such as a computer, or limitations that amount to improvements to another technology. The following types of limitations for Alice’s claims may fall in this category.

·        a computerized communication coordination component configured to coordinate communication among a plurality of players (with possibly more detailed recitations of its sub-components or functionalities)

·        a security component configured to add a secure level to the exchanged messages

·        a shadow account unit including one or more of:

o    a multiparty communication component

o   a secure transaction component

o   an encryption component

·        a secure transaction mechanism or  a multiparty transaction communication component added to a computer

·        a computerized banking exchange system including:

o   a multiparty communication unit configured to receive simultaneous communications from a plurality of parties located at different locations

o   a secure transmitter unit configured to add a security layer to the communications before the communications are transmitted over the network

o   a secure receiver unit configured to check  a security layer of a received communications before the communications is processed

·        Adding limitations that preclude manual performance and require performance by a machine, such as a computer, e.g., reciting a minimum speed for performing steps of a recited process.


c)      Avoiding system and method claims that rise or fall together

The Court indicated that all of Alice’s claims rise or fall together because “the system claims are no different from the method claims in substance.” A practitioner may prefer to draft claims of different types in a way that their subject matter eligibility is considered independently. Here are two suggestions in this regard.

·        Avoid mirroring the language of the method claim in the system claims. In particular, for system claims, recite components that include tangible parts (encoders, registers, etc.).

·        File separate applications for the invented system and/or apparatus and the invented method performed by the system and/or apparatus, and focus the system or apparatus application on practical aspects of the “inventive concept.”


Possible amendments to Prometheus’s claims[2]



In view of the Patent Office’s Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products (available at, an applicant should not be able to avoid having Prometheus-like claims subject to scrutiny as including or reciting a law of nature or natural phenomena. Thus, the following suggestions are not related to avoiding this scrutiny, but rather involve tangible features that may transform an otherwise ineligible claim into one where the “inventive concept” is “significantly different” from a law of nature or natural phenomenon.

a)      Transforming the “inventive concept”

·        If the claim includes a “determining” step, add novel assays and/or diagnostics that may be applicable to the determining — think about now and 5 or 10 years from now.

·        Describe in detail and claim how one of skill in the art would perform an exemplary assay and/or diagnostic.

·        Describe in detail and claim relevant detection sensitivity, particularly where accuracy is important. To the extent possible, include data supporting the need for improved assays with higher sensitivity, e.g., interference from other analytes, speed of results, or better sample availability (e.g., from a less invasive procedure).

·        Describe in detail and claim a novel reporting or data handling method. This may be double-jeopardy — both a law of nature and an abstract idea. See above for specific practical tips about drafting claims that recite an abstract idea.

·        Describe in detail and claim a novel sample handling and/or storage method. To the extent possible, include data supporting the application of the handling and storage techniques to the type of samples that will be analyzed.

·        Educating the inventors on difficulties presented by Mayo and Alice may help redirect the application to a patentable “inventive concept.” And be cognizant of “appending conventional steps, specified at a high level of generality.”

b)      Other practical tips for diagnostic method claims

·        Focus claims on tangible steps taken by a likely infringer, which will probably not be physicians. Avoid divided infringement, where possible. See, e.g., Limelight Networks, Inc., v. Akamai Technologies, Inc., 134 S.Ct. 2111, 572 U.S. ___ (2014).

·        Engage in a mini-obviousness analysis regarding the “inventive concept.” Recall the debate over Mayo and Alice, pitting those arguing that Section 101 requires an “invention” (and not just a broad statutory class) against those arguing that novelty and nonobviousness are the hallmarks of “invention” and should be limited to the analysis under Sections 102 and 103. The Court may not have defined what is an “inventive concept,” but the definition is likely to use the vernacular of “invention” that is familiar to practitioners, examiners, and the judiciary.

·        Recognize, and educate the inventors, that individual claims may have to be narrower in view of Mayo and Alice. Thus, more narrow claims and multiple patents may have to do the work that would have been done by a few broad claims in one patent.

·        Don’t forget your vorpal blade.

Key Takeaways

In addition to these drafting suggestions, we would also like to underscore two key takeaways that we draw from Mayo and Alice:

1.      Quality patent drafting, in both the specification and claims, is more important than ever. Overcoming the Section 101 hurdles set forth in Mayo and Alice, while keeping an eye on the ever-evolving Section 112 standards and potential infringement issues, is a demanding task.

2.      For certain types of inventions that are susceptible to patent eligibility attack, patent drafters may want to work more closely with inventors to define and refine the application than they would for other inventions. The drafter may have to spend more time educating the inventors and working with them to understand where the “inventive concept” may lay.


[1] In Alice’s patent US 5,970,479, asserted system claim 16 and method claim 33 read as follow:

16. A system to enable the formulation of customized multi-party risk management contracts, the system comprising:

a plurality of main data processing devices interconnected by at least one data communications link, each said data processing device running an operating system and applications software;

one or more data storage devices to which each data processing device has access;

a plurality of data input/output channels providing connection to a plurality of stakeholder locations, each said location having data processing means, and the system being programmed for:

regulating input of data, specifying a risk phenomenon, a range of outcomes for the phenomenon, and a time of maturity;

stakeholders inputting to a said data storage device by ones of the stakeholder data processing locations contract data for an offered contract, specifying an entitlement due at maturity for each outcome in the range of outcomes for a one of the predetermined phenomena, and an amount payable to a seller;

counter-party stakeholders inputting to a data storage device by ones of the stakeholder data processing locations registering data, independent of contract data entered by stakeholders, as to a likelihood of occurrence of each outcome in the range of outcomes for at least one of the predetermined phenomena;

pricing and matching a contract by the main data processing devices for at least one of the offered contracts from the seller registered data by: for an offered contract, selecting the registering data for the respective phenomenon and, in response to entitlements specified for each outcome in the range of outcomes for the phenomenon, calculating a counter-consideration, and, by comparison of the calculated counter-consideration with the consideration, matching an offered contract with at least one counter-party stakeholder.

33. A method of exchanging obligations as between parties, each party holding a credit record and a debit record with an exchange institution, the credit records and debit records for exchange of predetermined obligations, the method comprising the steps of:

(a) creating a shadow credit record and a shadow debit record for each stakeholder party to be held independently by a supervisory institution from the exchange institutions;

(b) obtaining from each exchange institution a start-of-day balance for each shadow credit record and shadow debit record;

(c) for every transaction resulting in an exchange obligation, the supervisory institution adjusting each respective party's shadow credit record or shadow debit record, allowing only these transactions that do not result in the value of the shadow debit record being less than the value of the shadow credit record at any time, each said adjustment taking place in chronological order; and

(d) at the end-of-day, the supervisory institution instructing ones of the exchange institutions to exchange credits or debits to the credit record and debit record of the respective parties in accordance with the adjustments of the said permitted transactions, the credits and debits being irrevocable, time invariant obligations placed on the exchange institutions.


[2] In Prometheus’s patent US 6,355,623, claim 1 reads as follows:

1. A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:

(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and

(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,

wherein the level of 6-thioguanine less than about 230 pmol per 8×108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and

wherein the level of 6-thioguanine greater than about 400 pmol per 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.


Submitted on October 28, 2014


Boston Patent Law Association

One Batterymarch Park, Suite 101,

Quincy, MA 02169

Phone: 617.507.5570






Boston Patent Law Association
One Batterymarch Park, Suite 101
Quincy, MA 02169
Phone: 617.507.5570

Membership Software Powered by YourMembership  ::  Legal