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ARTICLE · 28 FEBRUARY 2024

Practical Steps For Patent Prosecutors Addressing 101 Rejections

Wolf, Greenfield & Sacks, P.C.
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For many who draft, prosecute, or examine software-based claims, the Supreme Court's 2014 opinion in Alice Corporation Pty. Ltd. v. CLS Bank International...

United StatesIntellectual Property
Usha Parker
Usha Parker
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For many who draft, prosecute, or examine software-based claims, the Supreme Court's 2014 opinion in Alice Corporation Pty. Ltd. v. CLS Bank International (Alice) kicked off an era of uncertainty and frustration. Based on a number of Federal Circuit decisions in the years since Alice, the United States Patent and Trademark Office (USPTO) has attempted to clarify the issue of patent eligibility for process claims. This article begins with a brief overview of subject matter eligibility and the guidance issued since 2014, and some practical suggestions for mitigating and addressing Alice-based rejections follow.

Subject Matter Eligibility

35 U.S.C. § 101, which pertains to patent eligibility of subject matter, states: "[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." Those

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