How In-House IP Counsel Can Fortify Their Patent Filings Against § 101 Rejections

For more than a decade, § 101 has been the dark cloud over U.S. patent practice. Even companies with sophisticated R&D pipelines routinely find themselves stuck in eligibility quicksand, watching well-designed innovations get bounced as “abstract ideas” or “mere data processing.”

Yet the surprising truth is this: the companies that consistently avoid § 101 headaches aren’t doing anything exotic. They aren’t filing longer applications, or denser ones, or even necessarily more expensive ones. What they are doing is changing when and how they think about eligibility.

If you’re in-house, this shift matters. Eligibility is no longer just a question of prosecution strategy — it is a question of drafting culture. And it starts long before outside patent counsel or their patent agents puts fingers to keyboard.

Let’s walk through what the most successful in-house teams are doing now, and why it works.

Start With the Story — Not the Claims

When a § 101 rejection lands, it is almost always because the application failed to answer a simple question: what is the technical improvement?

In-house counsel who consistently escape § 101 trouble insist that every application tells a clear, explicit story about:

• what technical problem existed,

• why existing systems failed, and

• how the invention improves the functioning of a computer, a device, a network, or a process.

This “technical improvement narrative” has become the backbone of modern eligibility practice. Examiners respond to it. PTAB judges respond to it. And courts — when you get that far — respond to it as well.

The trick is getting this narrative into the

, not just the claims. The spec is where the examiner forms their first impression of whether an invention is a dressed-up business rule or a genuine piece of engineering.

Draft Like You’re Talking to an Engineer — Because You Are

Another common pattern in successful companies is a drafting style that looks less like a whitepaper and more like a design review. Not in length — in substance. Applications that integrate:

• concrete data flows,

• block diagrams,

• components interacting in technical ways,

• algorithmic steps or pipelines, and

• real-world implementation details,

are treated very differently at the USPTO. Examiners are far less likely to label a claim “abstract” when the specification reads like an engineering blueprint rather than a conceptual description.

The point isn’t to drown the reader in detail — it’s to show that the innovation is grounded in technical reality.

Claim Diversity: Your Built-In Safety Net

Sophisticated in-house teams also take a broader approach to claims. A single claim set — almost always method-only — is where § 101 disasters happen. Modern eligibility practice rewards variety. A well-fortified filing typically includes:

• a method claim,

• a system/architecture claim,

• an apparatus or device claim,

• a non-transitory computer-readable medium claim, and

• a claim framed explicitly as an “improvement to [specific technology].”

This isn’t fluff. It gives prosecutors multiple pathways to find the version of the invention that an examiner can accept as a practical application rather than an abstraction.

“Show Your Work”: Technical Effects Matter

One of the cleanest ways to guide an examiner out of the “abstract idea” rabbit hole is to show — in the claims themselves — how the invention affects the technology.

Does it reduce latency?Minimize memory operations?Improve accuracy of a model or filter?Speed up a training pipeline?Reduce processor cycles?

These aren’t marketing talking points. They are eligibility lifelines. Claims that recite technical effects in operational terms are far more likely to survive § 101 scrutiny.

Dependent Claims: The Underestimated Armor

Many companies underuse dependent claims. The best in-house teams do the opposite.

They intentionally include narrower, implementation-specific dependent claims — not with an eye to enforcement necessarily, but to provide the examiner with obvious allowable subject matter when the broader claims face eligibility drag.

In practice, those dependent claims become the foothold that enables broader continuation filings later.

Draft for the World, Not Just the USPTO

Another subtle shift in recent years: the influence of European and Chinese eligibility requirements. When an application is written to satisfy EPO’s “technical solution to a technical problem” test or CNIPA’s demand for concrete implementation details, that drafting discipline naturally fortifies the U.S. filing against § 101.

In-house teams with global portfolios increasingly instruct outside counsel to draft “EPO-ready” specs even for U.S.-only inventions — and the § 101 benefits are immediate.

The AI Angle: Inventorship as a Hidden Eligibility Risk

A new twist in § 101 practice is the role of AI-assisted invention. After 2024’s USPTO guidance, prosecutors must document:

• the human conception,

• the AI’s contribution,

• and the decision-making process behind the inventive step.

  
  

This is not only about inventorship — unclear human contribution can create examiner discomfort on § 101 grounds as well. In-house counsel who put simple processes in place for documenting AI involvement are already avoiding misunderstandings later.

Conclusion

Eligibility battles are not won at the USPTO. They are won in the first hour of drafting — or the last day of invention disclosure preparation.

The highest-performing in-house teams are not producing longer applications or denser ones. They are producing better-prepared ones:

• richer specifications,

• clearer problem/solution framing,

• claim variety,

• built-in fallback positions, and

• closer collaboration with engineering teams.

This is what actually fortifies a portfolio against § 101 in 2025 and, we hope, in 2026 and beyond. The companies that make this shift are seeing fewer rejections, faster allowance, and stronger patents. Those that don’t will continue to fight unpredictable battles the statute was never intended to create.