Step One in Overcoming Patent Eligibility Rejections

Patent eligibility rejections are an often-encountered bane for patent applicants in the software space. And for good cause: it can be extremely unlikely that certain software innovations will ever overcome the patent eligibility hurdle. However, many applicants do themselves a disservice by failing to adequately address potential patent eligibility issues during the patent drafting process.

The first step in overcoming a patent eligibility rejection (or avoiding it altogether) is to describe the specific technical elements of the innovation within the patent application. These technical details will very likely need to be recited in the claims to avoid patent eligibility issues. 

To this end, the Patent Trial and Appeal Board and federal courts have time and again found patents and patent applications to be directed to patent ineligible subject matter simply because they fail to provide sufficient technical detail. As a recent example, the Federal Circuit in USC IP P’ship, L.P. v. Meta Platforms (Facebook), Appeal No. 2022-1397 (Fed. Cir. August 30, 2023), recently affirmed the invalidity of issued patent claims relating to an "intent engine" that can provide improved search results by analyzing information about the user and other contextual clues. The patent owner argued that the claims were directed to an improvement in computer functionality, but the Federal Circuit nonetheless found the claims to lack an inventive concept to transform the abstract idea of “collecting, analyzing and using intent data” into a patent-eligible application. Importantly, the opinion noted that the patent's disclosure described its "intent engine" only as a black box and failed to provide any technical details of how that technology functions.

This patent owner in this case may have been able to avoid this outcome if the original patent application had described the inner workings of its key inventive elements in more detail.