Examiner interviews and subject matter eligibility: Constructive steps for practitioners

The patent community has been struggling with subject matter eligibility issues ever since the Supreme Court’s 2014 landmark decision in Alice Corp. v. CLS Bank International.[1]  While the United States Patent and Trademark Office (USPTO) has issued guidelines[2] and examples[3] to streamline subject matter eligibility analysis and provide a more rational framework for determining patent eligible subject matter, patent practitioners still have difficulty dealing with § 101 rejections, particularly for inventions associated with software and business methods.

The author has found examiner interviews to be particularly useful for dealing with these rejections.  Examiner interviews allow a patent practitioner to have an ongoing dialogue with the examiners which may supplement the official communications made through office actions and responses.

The following are some strategies employed in examiner interviews that have been successful in moving forward prosecution of claims with subject matter eligibility rejections.

Engage with the examiners early:  Patent practitioners can initiate a substantial conversation with the examiner even at the interview request stage.  For example, to request an examiner interview, one should first submit an electronic automated interview request (AIR) and then follow up with a phone call.  Any opportunity to be on a call with an examiner – even for scheduling the interview – is a useful time to engage.

The questions posed can be open-ended and general, such as: “Do you/your art unit/your supervisor have any preference [e, a technical aspect to be added to the claims] that may help overcome the rejection?” “Does anything in the application jump out to you that can be added to the claims to move the prosecution forward?” “Do you have any suggestion on the general direction of the amendments that the applicant should consider for overcoming the rejection?”  Past experience has shown that these engagements can be beneficial: The examiners will have generally taken a quick look at their notes for the case and are open about their (and/or their art unit’s/supervisor’s) preferences.  Incorporating the examiners’ suggestions from these early discussions into the agendas for the substantive interviews can make these subsequent Interviews more productive.

Strive to see the rejections from the examiners’ point of view:  Patent practitioners are advocates for their clients.  Our natural bias towards our clients’ positions often may make the examiners’ positions appear unreasonable.  However, striving to understand the examiners’ difficulty in allowing a claim helps us to be better advocates.

Developing this understanding includes reading rejections carefully and actively listening to the examiners during the examiner interviews, but these actions are just the basics.  An advocate should also acknowledge openly that subject matter eligibility issues make the examiners’ job very difficult too and offer help to make that job easier.

A few of the examiners’ difficulties have included: (i) the claims are written in such a way that the non-technical features appear at the beginning, and the technical features appear towards the end; (ii) the specification frames the invention in non-technical terms; (iii) the examiners’ art unit or supervisors have some specific preferences.  Understanding such concerns – seeing the rejections from the Examiner’s point of view – can be useful for a faster, more efficient prosecution.

Frame the story as a back-end computer-based solution: Particularly for cases drafted before the Alice decision, the specification may frame the story of the invention as a front-end business solution.  However, these pre-Alice cases generally include a reasonable level of technical details on how the solution is implemented at the back end, often using diverse types of computing devices and databases.

A patent practitioner may use examiner interviews to emphasize this back-end solution. For example, at the beginning of an examiner interview, when the patent practitioner provides a high-level story of the invention, the narrative can be framed as (i) a description of the state of the relevant technology at the time of filing and (ii) how the invention solves a particular problem in that technology. The narrative may be as simple as demonstrating an unavailability, at the time of filing, of the claimed configuration involving diverse types of computing devices and databases (eg, geographically or functionally diverse) and that the claimed configuration was invented to address this unavailability.

This reasoning can invite a pushback from examiners that the specification is generally directed to a front-end business solution.  To counteract this, the patent practitioner can point to how the technical specificity of the claims provides a back-end technical solution, and the front-end business solution is just an example of applying the back-end technical solution.

Keep the dialogue open: During the interview, the patent practitioner should invite the examiner to contact them should they have any questions or comments as they analyze the case.  And indeed, the examiners often do call.  Generally, they report that they have analyzed the case further in light of the examiner interview and/or spoken to their supervisor, a subject matter eligibility expert, or another fellow examiner.  During these calls, they generally provide valuable suggestions – based on their further analysis and/or the overall conversations – that help to move the prosecution forward.

The relationship between a patent practitioner and an examiner is not and should not be adversarial.  When the law is complex and in flux – as subject matter eligibility law under 35 USC § 101 currently is – multiple points of contentions may arise during the examination.  A continuous dialogue with the examiner through examiner interviews generally helps the parties understand each other’s positions and methodically move towards a resolution.