When Alice came down in 2014, many in the patent prosecution bar reacted with something close to denial about its impact on obtaining patents related to business methods and software.
The hope, widely held, was that this would get sorted out soon. The USPTO would provide clear guidance about how to avoid and overcome Section 101 rejections like they had in the past. The Federal Circuit would draw cleaner lines. Congress would step in.
The working theory was that, once that happened, you’d be able to get applications through the USPTO just by adding some magic language to claims and the specification. In anticipation of that, some practitioners even advised clients to file appeals within the USPTO to buy a year or two of time until that happened.
Ngai Zhang and I were separately coming to a very different conclusion: there had to be a new, better way to reliably obtain strong patents in this space.
That’s how I first met Ngai.
He reached out after he came across an early article I’d written about the impact of Alice and wanted to compare notes. Around the same time, Ngai had argued an oral hearing at the USPTO and walked out with a lesson that has guided his work ever since: examiners and judges form a snap judgment about what a patent application is really about. If that judgment is “business innovation,” you’ve already lost. The technical story has to be the first impression.
I was coincidentally coming up with and writing about strategies for doing that.
Over time, it became clear that the hoped-for reset never came. Many applicants and practitioners continued to draft and file patent applications focused on business use cases, with some technical language added at the beginning or the end. Those applications often landed in business method art units, ran into repeated Section 101 rejections, and had to be abandoned. And even when some were allowed, they were often not the kinds of patents you would want to depend on in litigation.
The problem also did not stay confined to business method inventions, which became especially important as AI-related inventions took off. Although the USPTO’s 2019 guidance significantly improved at least how Section 101 was applied at the agency, later shifts at the USPTO limited that reprieve. As I’ve written before, Section 101 rejection rates soared in AI-related art units, raising many of the same issues we had been dealing with in the business method context.
It wasn’t long before Ngai and I realized our approach — rethinking things from the ground up rather than just following what other practitioners had done in the past — extended well beyond Section 101. We started exchanging strategies on every part of the practice: examiner interviews, unconventional amendment strategies, claim drafting, and how to draft for both prosecution and litigation.
Eventually, I joined Ngai at Foley & Lardner so that we could implement these strategies together. We’ve kept having these conversations, and finally decided to record this episode to share that story - and the strategies - more broadly.
But this is not just a look back at how Alice forced us to rethink patent prosecution.
It is also a conversation about what comes next.
The same team that was built around solving hard Section 101 problems for business method inventions is now focused heavily on AI — both as a patenting challenge and as a tool that may reshape patent practice itself.
We talk about tools for AI-assisted drafting and prosecution, patent quality, and why judgment, communication, and human interaction may matter even more as the tools get better.
On this episode, Ngai and I also discuss:
Why relying only on art unit prediction tools & wordsmithing is a losing strategy for § 101
Why claim 1 shouldn’t be your broadest claim
How taking features out of independent claims can help advance prosecution - and how the strategy also leaves clients pleasantly surprised by the breadth of the allowed claims
Examiner interviews as hostage negotiations: Ngai’s framework based on Chris Voss’s Never Split the Difference
Where and why Ngai and I differ on whether to push for an explicit on-the-record agreement before ending an examiner interview
AI as a collaborator for patent drafting and prosecution
What AI changes — and does not change — about the role of patent lawyers
The importance of human interactions and communication for patent prosecution even in the age of AI
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