USPTO Business Methods Customer Partnership Meeting – Yes, Business Method Patents Still Exist in the United States

By: Robert Lord and David Rosenblitt


The Customer Partnership Meeting was held on September 20, 2017, and was hosted by the United States Patent and Trademark Office (“USPTO”) at the Madison Auditorium in Alexandria, VA.  Osha Liang LLP attended the event at the San Jose, California regional office of the USPTO, via video conference.  The Osha Liang LLP attendees made up more than fifty percent of the crowd at the San Jose, California location.

Speakers for the event included:  Andrew Hirshfield (Commissioner for Patents for the USPTO), Tariq Hafiz (Director, Technology Center 3600), Jamisue Plucinski (Technology Center Quality Assurance Specialist (QAS), Technology Center 3600), Namrata Boveja (Supervisory Patent Examiner, Technology Center 3600), Charles Bieneman (Member, Bejin Bieneman PLC), Kirupa Pushparaj (Chief IP Counsel, Square, Inc.), Jessica Rossi (Management QAS, Office of Patent Training), Victoria Shumate (Supervisory Patent Examiner, Technology Center 3600), and Peter Ludwig (Primary Patent Examiner, Technology Center 3600).

As part of the Director’s update, it was he mentioned that of the 255 patent applications where appeals were filed with the Patent Trial and Appeal Board (PTAB), the decisions have been mostly favorable to the examiners.  In fact, seventy-seven percent of the appeals resulted in affirmation of the examiner, compared to sixteen percent of the appeals where the examiner was reversed, and  seven percent of the appeals where the examiner was affirmed in part. The Director also indicated a website dedicated to Business Method issues is under construction and should be available shortly (www.uspto.gov/businessmethods/).  On the website, individuals can request to be added to an email distribution list to receive timely updates.  Surprisingly, the Director indicated that the Business Method Technology Center (3600) is planning to hire more examiners to address the continually increasing pendency issue and help reduce the backlog of cases.  Finally, the allowance rates of Business Methods Technology Center as a whole were discussed and the latest data shows that allowances in fiscal year 2017 (12.7% through August) will increase from fiscal years 2015 (10.4%) and 2016 (6.2%), showing that allowances are still possible and.  The Director strongly urged the use of effective examiner interview practice to increase chances of allowance.

During the Partnership Meeting, companies were urged to participate in the Patent Examiner Technical Training Program (PETTP).  This partnership allows companies to host patent examiner’s at meetings to discuss the technology of the company either in-person at the USPTO (in Alexandria or one of the regional offices), at the company site, or by webcasting.  More information is available at:  www.uspto.gov/PatentExaminerTechTraining or by email at:  Examiner_Technical_Training@uspto.gov.

During the presentation regarding suggestions to overcome patentable subject matter rejections under § 101 in the US, the presenter provided an overview of § 101 case law.  He also explained that the Alice and Ultramercial decisions established a de facto “technological arts” test for determining eligible subject matter analogous to the European test that has been in place for the past 10-15 years.

Therefore, it was recommended that patent applications be drafted to state a technical solution to a technical problem.  Similarly, he recommended that patent-eligibility be argued by showing a technical solution to a technical problem.  He stated that it was less effective to argue that a business problem is solved via a technical solution, since examiners may often argue that the business problem “is not necessarily rooted in computer technology”.   The presenter concluded by providing the following Practice and Drafting Tips.

Practice Tips

When responding to Rejections–Examiners must state a prima facie case by:

  • addressing every claim limitation
  • accounting for the claim as a whole (watch out for piecemeal rejections)
  • stating an abstract idea pertinent to the claim (e.g., not just “the abstract idea of processing data” without additional explanation accounting for specific claim recitations)
  • addressing “significantly more” with more than conclusory statements

Drafting Tips

  • show how a technical problem is solved by a technical solution
  • don’t invent terminology: use terms of art when possible, and define these terms clearly. Avoid new terms, which may be viewed as abstract by examiners.
  • don’t use a claim preamble that shouts “business method”