Overcoming Abstract Idea Rejection with Targeted Patent Application Drafting

1. Overcoming Abstract Idea Rejection with Targeted Patent Application Drafting Frequently, claims are rejected by the United States Patent and Trademark Office (USPTO) as being abstract notions. This poses a serious problem for applicants that spend money on R&D initiatives to protect their innovations. Targeted patent application drafting is the most effective technique to tackle this issue. It gives patent drafters the ability to predict the art unit (AU) that will review the application in order to optimise the scope of claims for a smooth approval or grant rate. By accounting for potential rejection of an abstract notion at the time of drafting, targeted patent drafting can help the applicant save crucial resources. Continue reading to discover more information about art units, rejecting abstract ideas, and crafting targeted patent applications. Additionally, you will learn how Sagacious IP's patent professionals create watertight applications to prevent office actions and rejections for abstract ideas. Understanding Abstract Idea Rejection According to the USPTO's Manual of Patent Examining Procedure (MPEP) 2106, there are two general requirements for subject matter eligibility. First, one of the four categories— process, machine, production, and composition of matter—must apply to the claimed invention. The second requirement is that the claimed invention cannot be based on any of the legal exceptions, such as an abstract concept, a natural phenomenon, or a rule of nature. The abstract idea is the judicial exception mentioned above that is used the most frequently. The USPTO divided abstract concepts into three groups in the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG): a mental process, a mathematical concept, or a technique of arranging human activity. Although a few art units could reject an abstract idea in the majority of their cases, their justification for the denial generally follows a 2-step process and makes use of precedent from earlier legal proceedings. Both the examiners and the lawyers have received a lot of information from the USPTO to help them understand the specifics of this situation. Even if one disagrees with the examiner's justification, there is still some justification to disagree with. Additionally, some examiners search for and suggest material in the specification that lawyers can use to refute the rejection of abstract ideas. When directing an application to the appropriate art unit, the classification of patents is essential. The same is discussed in our next section. It also draws attention to the USPTO's classification scheme.

2. Patent Classification The USPTO switched from the United States Patent Classification (USPC) system to the Cooperative Patent Classification (CPC) system, which was created in collaboration with the European Patent Office, on January 1st, 2013. (EPO). Publications of patent applications may be classified as either primary (equal to an original categorization) or secondary (equivalent to a cross-reference). Based on the application's key innovative idea, the major classification for the publication is chosen. The claims are used to determine the main innovative concept of the patent application. An art unit that is mapped to one of these categories is initially assigned to a non-provisional application once it has been categorised into one of the classed categories. Technology is one of the many different factors considered while choosing one of the classifications; as a result, the chosen category or artistic unit may be predictable. Technology Centers and Art Units Examiners with specialised scientific and technological domain knowledge have been grouped by the USPTO into technology centres. Each technology hub handles patent applications pertaining to a certain technical field. These technological hubs are further separated into art units (AUs) that are arranged according to the main categories of imaginative art that falls within a scientific or technical field. Group art units (GAUs), which are even more specialised and detailed teams of examiners, are organised from AUs. Examiners who go at patent applications are part of group art units. According to specific subject matter classifications of a given GAU, all applications are docketed to examiners. Technology centres, individual art units, and group art units must be understood by patent applicants and drafters. This makes it easier to comprehend the many kinds of inventions that exist within each scientific and technical field and provides an estimate of how long it will take for an invention to be granted a patent. Additionally, it enables one to purposefully target a particular AU for a patent application. Customised Patent Application Drafting and Grant Rates Many patent attorneys and practitioners think that how examiners in various art units implement the Alice decision will determine the likelihood of rejecting abstract ideas. It's interesting to note that many of the art units now have higher grant rates because to the 2019 PEG. For instance, allowance rates in non-business-related art units and other hardware-based art units have increased. The capacity of innovators to get rights and investments in their ideas, however, is undermined by the fact that some art units continue to retain a strict standard for patent subject matter eligibility. In light of this, it is advised to avoid "business methods" art units (such as 3600-related units) by specifically writing patent applications and claims. This

3. process of anticipating the art unit while drafting the application's claims and scope is known as "Targeted Patent Application Drafting." To get more information, read the entire article aboutPatent Application Drafting.