Using Subject-Matter Eligibility as a Sword and Shield When Protecting Clients’ IP


Patent law is constantly evolving, due in large part to subject-matter eligibility. The latest Supreme Court decision on this subject, known as the “Alice” case (Alice Corp v CLS Bank), held that subject-matter eligibility for claims directed to abstract ideas is based on a two-part test:

  • First: determine if the claims are directed to an abstract idea or general principle.
  • Second: if so, evaluate all claim elements individually, and in combination, to determine if the claims include an inventive concept sufficient to ensure that the patent in practice amounts to “significantly more” than a patent upon the abstract idea itself.

As this area of patent law remains fluid, patent examiners are actively (and inconsistently) using subject-matter eligibility to examine applications. That’s where our vast experience on both sides of the IP process — preparation and prosecution and litigation — becomes a competitive advantage for our clients in industries ranging from computers, the internet, biotechnology, and oil and gas.

Our team has a deep understanding of the level of detail required to ensure a claim is valid when analyzed under the two-part subject-matter eligibility test — even if what we receive from the clients is a high-level description of the invention. We collaborate and dig deep to deliver a more holistic view of our clients’ inventions on the front end, and have developed an arsenal of strategies when drafting applications, including arguments and amendments should a rejection arise.

We’ve helped many of our clients address this issue for years, and their continued business is a testament to our track record in drafting patent applications that can withstand stringent and ever-changing subject-matter eligibility requirements.

Shutting down a patent troll before a costly trial

Building on our experience in drafting solid applications, we also leverage subject-matter eligibility knowledge to defend clients from frivolous infringement claims.

For example, our team represented one of the oil industry’s largest players as lead defense counsel in a multi-party infringement suit brought by a patent troll. Working alongside 12 other firms to represent more than 20 defendants, our deep understanding of subject-matter eligibility was brought to bear against the plaintiff’s broad claim related to “controlling a device over a network.”

Arguing the broadness of the claim and demonstrating that many everyday activities would infringe the plaintiff’s patent — from printing to a network printer to uploading photos to social media sites — our team successfully leveraged the plaintiff to voluntarily dismiss the case at the pleading stage, saving our client and the other defendants from a costly trial.