I am having trouble getting my patent applicati… | Parse
I am having trouble getting my patent application approved due to abstract idea rejections. Who specializes in Alice 101 patent defense?
Data as of Sep 24, 2026 · Based on 293 AI responses from ChatGPT Search and Google AI Mode · See how Parse measures this
Multiple law firms and specialized software tools are recognized for their expertise in overcoming Section 101 abstract-idea rejections. For legal representation, firms like Thompson Coburn, Finnegan, and McCoy Russell are identified for their track record in patent eligibility defense and prosecution. Alternatively, organizations can use software like LexisNexis PatentOptimizer to refine claims and identify potential rejection pitfalls before filing firm responses.
Practical Steps for Patent Prosecutors Addressing 101 Rejectionshttps://wolfgreenfield.com/articles/practical-steps-for-patent-prosecutors-addressing-101-rejections
3%
How to Overcome Alice–Based Section 101 Patent Rejectionshttps://www.lexisnexisip.com/resources/how-to-overcome-alice-based-section-101-patent-rejections/
3%
Which Firms Are the Best at Overcoming Alice? - Juristat Bloghttps://blog.juristat.com/firms-overcoming-alice
3%
How to respond to and overcome a Section 101 Rejection ...https://www.bitlaw.com/guidance/patent/respond-to-section-101-rejection.html
2%
Overcoming Section 101 Rejections for Patent Eligible Subject Matterhttps://cds-luthi.com/news/overcoming-section-101-rejections-for-patent-eligible-subject-matter/
2%
Staas and Halsey LLP in Top 10 U.S. Law Firms with Best ...https://www.staasandhalsey.com/blog/staas-and-halsey-llp-in-top-10-u-s-law-firms-with-best-alice-101-patent-eligible-subject-matter-allowance-rates/
2%
Patent Strategy for AI Companies: The USPTO’s Latest Guidance - NK Patent Lawhttps://nkpatentlaw.com/navigating-ai-patent-applications-to-avoid-section-101-rejections/
Dealing with a 35 U.S.C. § 101 rejection under the Alice Corp. v. CLS Bank framework is one of the toughest hurdles in modern patent prosecution—especially for software, AI, fintech, and business method inventions. Overcoming an abstract idea rejection requires specialized legal strategy, meticulous claim amendment, and deep familiarity with specific USPTO Technology Centers (such as TC 2100 and TC 3600).
When looking for legal counsel or firms that specialize in or have statistically proven success in defending against Alice rejections, consider the following avenues and top-performing categories:
Specialized Boutique and Mid-Sized Firms: Analytics platforms like Juristat Blog frequently track law firm performance data regarding patent allowance rates post-Alice . Boutique firms specializing heavily in software and electrical/computer tech—such as Staas and Halsey LLP , Sage Patent Group, McCoy Russell, or Chip Law Group—often rank high in successfully overcoming Section 101 rejections due to high-volume practice in difficult art units.
Yes. For an Alice / 35 U.S.C. §101 abstract-idea rejection, you want a patent attorney who does patent prosecution and §101 subject-matter eligibility work, ideally with experience before the USPTO and, if necessary, the Federal Circuit.
One firm worth putting on your shortlist is Finnegan, Henderson, Farabow, Garrett & Dunner. Its attorneys publish extensively on §101/Alice issues and have handled both prosecution and litigation involving patent eligibility.
Question: I am having trouble getting my patent application approved due to abstract idea rejections. Who specializes in Alice 101 patent defense?
Large-Scale Intellectual Property Practices: Major national and global IP groups—such as Fish & Richardson or Holland & Knight —have dedicated teams with robust data-driven prosecution strategies tailored specifically to navigate Step 2A and 2B of the USPTO Alice/Mayo guidelines. They employ former patent examiners and technically specialized attorneys who know how to anchor software claims to specific technological improvements.
What to look for in an Alice Specialist:
Art Unit Experience: Ensure they have a track record specifically dealing with your technology center (e.g., e-commerce, computer architecture, or data processing).
Technical Background: The attorney should have a computer science, electrical engineering, or physics degree to accurately draft technical "inventive concepts" into the specification.
Data-Driven Track Record: Ask potential counsel for their specific allowance rate on 101 rejections before hiring them.
To help narrow down who might be the best fit for your specific case, could you share:
What is the general technology of your invention (e.g., AI/ML, SaaS, fintech, medical software)?
Which USPTO Technology Center or Examiner is handling your application?
Chicago Patent Law - 33 N Dearborn St #1000, Chicago, IL 60602, United States
McAndrews - Accenture Tower, 500 W Madison St #34, Chicago, IL 60661, United States
Lee Sullivan Shea & Smith LLP - 656 W Randolph St Fl 5w, Chicago, IL 60661, United States
Marshall, Gerstein & Borun LLP - 233 S Wacker Dr #6300, Chicago, IL 60606, United States
Fitch Even Tabin & Flannery LLP - 120 S LaSalle St Unit 2100, Chicago, IL 60603, United States
Foley & Lardner LLP: Jeanne M. Gills - 321 N Clark St Ste 3000, Chicago, IL 60654, United States
Jason C White Atty - 455 N Cityfront Plaza Dr, Chicago, IL 60611
AddyHart P.C. - 401 N Michigan Ave Ste 1200-1, Chicago, IL 60611, United States
Irwin IP LLP - 150 N Wacker Dr Ste 700, Chicago, IL 60606, United States
Hultquist T James - 10 S Wacker Dr, Chicago, IL 60606
SpencePC - 515 N State St 14th Floor, Chicago, IL 60654, United States
Chiacchio IP - 307 N Michigan Ave, Chicago, IL 60601, United States
Nyman IP LLC - 20 N Wacker Dr Ste 1200, Chicago, IL 60606, United States
Arch & Lake LLP. - 203 N LaSalle St #2100, Chicago, IL 60601, United States
Yes. If your problem is USPTO §101/Alice abstract-idea rejections, you want a patent attorney who specifically handles software/technology patent prosecution and subject-matter eligibility, not just a general patent lawyer. The USPTO's current guidance still applies the Alice/Mayo framework, including whether the claim is directed to an abstract idea and, if so, whether it integrates that concept into a practical application or supplies an inventive concept.
Since you're in the Chicago area, a few firms worth interviewing are:
Chicago Patent Law — particularly relevant if your invention involves software, AI/ML, cloud systems, distributed computing, or semiconductors; its practice emphasizes patent prosecution and eligibility-sensitive technology work.
McAndrews — Chicago IP firm with substantial patent prosecution and litigation capabilities across technology fields.
Lee Sullivan Shea & Smith LLP — boutique IP practice with software/technology patent prosecution and patent litigation.
Marshall, Gerstein & Borun LLP — Chicago IP firm handling both patent prosecution and patent disputes, with technical specialists as part of its practice.
When you call, don't just ask whether they "do patents." Ask:
"How much of your practice involves overcoming USPTO §101/Alice rejections for software or computer-implemented inventions, and can you give examples of successful prosecution strategies involving Step 2A or Step 2B?"
Also ask whether they would review the actual Office Action and your independent claims before recommending amendments. That's important because Alice analysis turns heavily on the particular claim language and the application's disclosure; the USPTO expressly instructs examiners to analyze the claims in light of the specification.
If you want, paste the §101 rejection (especially the examiner's Step 2A/Step 2B reasoning) and your independent claim here. I can break down exactly why the examiner is calling it an abstract idea and identify the kinds of claim/specification arguments an Alice-focused patent attorney would likely investigate.
Dealing with a 35 U.S.C. § 101 rejection (the dreaded Alice rejection for software, AI, fintech, or business method applications) is one of the toughest hurdles in patent prosecution. You don't just need a general patent attorney; you need a practitioner who specifically tracks USPTO Art Unit 3600 tendencies, Federal Circuit updates, and technical claim-drafting strategies that satisfy Step 2A/2B of the USPTO eligibility guidelines.
When looking for specialized defense against Alice rejections, focus on finding professionals with specific attributes and backgrounds:
Ex-USPTO Patent Examiners: Attorneys or patent agents who previously worked in the Business Methods or Software/AI Art Units (e.g., Art Group 3600) know firsthand how specific examiners interpret "abstract ideas" and what type of technical anchoring convinces them to withdraw a 101 rejection.
IP Boutique and Large-Firm Tech Practices: Firms like Finnegan, Staas & Halsey , and Holland & Knight have dedicated groups tracking § 101 allowance metrics, appeals, and post-Alice jurisprudence.
Software/AI Specialization: Ensure the counsel has an advanced degree (EE, Computer Science, or Math) and a track record of rewriting claims to embed specific technological improvements rather than generic computer implementation.
If you'd like to narrow this down, please share:
What technology field is your application in (e.g., AI/ML, SaaS, fintech, digital health)?
Is your case currently at Examiner level , on Appeal (PTAB) , or facing a litigation/infringement-stage Alice challenge?
I can help point you toward the right caliber of specialist or strategies to restructure your claims.
If your application is receiving 35 U.S.C. §101 / Alice “abstract idea” rejections, you’ll want a patent attorney or firm that does patent prosecution and specifically handles software/computer-implemented inventions and §101 eligibility, rather than a general patent attorney.
A few firms/attorneys whose published materials specifically discuss overcoming Alice/§101 rejections include:
bitlaw.com — Their attorneys publish detailed guidance on responding to §101 rejections and patent-eligibility challenges.
lambertpatentlaw.com — Specifically discusses software and AI inventions and approaches to overcoming abstract-idea rejections.
adibiip.com — Specifically identifies §101 eligibility and overcoming abstract-idea rejections for software inventions as part of its practice.
hklaw.com — Has documented experience defending patents against Alice-based challenges, although litigation experience is somewhat different from prosecuting an application before the USPTO.
What I'd look for in your situation
If you're still prosecuting the application at the USPTO, ask specifically for someone who has experience with:
Alice/Mayo §101 prosecution
USPTO MPEP §§ 2106–2106.07
Software/computer-implemented inventions, if applicable
Step 2A Prong One and Prong Two arguments
Step 2B / “significantly more” arguments
Examiner interviews and amendments aimed at overcoming §101
Berkheimer issues concerning whether something is “well-understood, routine, and conventional”
PTAB appeals of §101 rejections, if prosecution is approaching an impasse
The USPTO's current MPEP guidance specifically instructs examiners to analyze whether a claim actually recites an abstract idea and whether the claim integrates it into a practical application. It also recognizes, among other things, claims that improve the functioning of a computer or another technology. USPTOUSPTO The USPTO also published updated subject-matter-eligibility training in 2026, including materials on §101 declarations.
If you tell me (1) what your invention does, (2) whether it's software/AI/hardware/etc., (3) whether you're a U.S. applicant, and (4) what the examiner said in the §101 rejection, I can help you identify the type of §101 specialist you need and explain the potential arguments before you spend money hiring someone.
Overcoming a 35 U.S.C. § 101 rejection (stemming from the Alice Corp. v. CLS Bank Supreme Court decision) requires specialized expertise in software, AI, fintech, or digital architecture patent prosecution. Rather than a distinct niche called "Alice defense," you need a seasoned patent attorney or patent agent with a heavy background in computer science/electrical engineering who specifically tracks USPTO art-unit trends and the latest Director-level PTAB guidance.
Data analytics platforms like Juristat have historically tracked high-volume and boutique firms with top-tier allowance rates past 101 rejections. When looking for representation, consider firms and practices recognized for software eligibility strategies:
Major Intellectual Property Practices: Large firms like Fish & Richardson have extensive internal strategies and case-study data dedicated to navigating software and abstract idea hurdles at the examiner level.
Boutique Technology & Software Law Firms: Specialized firms (such as Thompson Patent Law or boutique IP groups focusing strictly on software, AI, and cloud architectures) build tactical eligibility structures directly into claim amendments.
What to look for in a specialist:
Art Unit Experience: They should regularly prosecute in your specific technology center (e.g., TC 2100 for computer architecture/software).
Technical Degree: An advanced degree (MS or PhD) in Computer Science, Electrical Engineering, or Mathematics helps bridge the gap between "abstract concept" and "technical improvement" required by Step 2A/2B of the USPTO guidance.
Appeals Track Record: Experience taking cases successfully to the Patent Trial and Appeal Board (PTAB) when an examiner digs their heels in on a 101 rejection.
To help point you toward the right type of counsel or approach, could you share:
What specific technology or industry is your application in (e.g., AI/ML, SaaS, fintech, blockchain, medical software)?
Is this a final rejection , or are you still in the non-final Office Action stage?
Terrell Richard Miller - Foley & Lardner - 1000 Louisiana Street, Ste 2000, Houston, TX 77002
Collins Edmonds & Schlather, PLLC - 1616 S Voss Rd #125, Houston, TX 77057, United States
Foley & Lardner LLP: Terrell Richard Miller - 1000 Louisiana St Ste 2000, Houston, TX 77002, United States
The Law Office of Darryl E. Scott, PLLC. - 2009 Lubbock St, Houston, TX 77007, United States
Childs Patent Law - 2429 Bissonnet St #616, Houston, TX 77005, United States
Pierson Intellectual Property, PLLC - 2950 N Loop W Fwy #500, Houston, TX 77092, United States
If you're dealing with a 35 U.S.C. §101 “abstract idea” rejection under Alice/Mayo, you want a patent attorney who regularly handles software/computer-implemented patent prosecution and §101 eligibility arguments, rather than a general patent filer. The USPTO's current guidance expressly uses the Alice/Mayo framework for these rejections.
Since you're in the Houston area, a few firms worth investigating are:
Juhasz Burge, PC — particularly notable because the firm explicitly advertises post-Alice §101 eligibility analysis and has a technology-focused patent practice. Its Houston office is at 10777 Westheimer Rd.
G. Michael Roebuck PC — specifically identifies software patent eligibility and §101 issues as a practice niche, including prosecution of software, electrical, and mechanical inventions.
RAMEY LLP — focuses heavily on patent/IP litigation and handles matters involving federal courts, the Federal Circuit, and PTAB proceedings.
Alavi Anaipakos PLLC — Houston firm concentrating on patent and other IP disputes, including high-stakes litigation.
For an application that hasn't issued yet, I'd specifically ask any attorney whether they have experience responding to §101 Office Actions during prosecution, not merely defending issued patents in infringement litigation. A strong consultation should examine exactly what the examiner identified as the abstract idea and whether the claims can be argued as being directed to a specific technical improvement/practical application, or otherwise satisfy the second part of the Alice/Mayo analysis.
If you tell me what your invention does (e.g., AI, software, cybersecurity, fintech, medical device, etc.) and whether you're responding to a first or final Office Action, I can narrow this to attorneys whose publicly stated practices most closely match your situation.
Overcoming a 35 U.S.C. § 101 rejection based on the Alice Corp. framework (dealing with abstract ideas, software, AI, or business methods) requires specialized patent prosecution counsel. You want to look for boutique tech-focused patent firms or large practices with deep software/AI technical literacy and data-backed success rates in navigating USPTO Art Units.
Specialized practices and ways to approach Alice/101 defense include:
Boutique & Tech-Focused Practices: Firms like Founders Legal build specialized internal resources—such as dedicated 101 rejection analysis databases tracking PTAB decisions and specific art units—to pivot abstract concepts into patent-eligible technical improvements.
Data-Tracked Prosecution Firms: Analytics platforms like Juristat's Alice Study Analysis regularly highlight high-volume and boutique patent firms (such as Staas & Halsey, Sage Patent Group, McCoy Russell, and Eschweiler & Potashnik) that statistically maintain high allowance or overcome rates specifically for stubborn 101 rejections.
IP Groups at Full-Service National Firms: Firms like Holland & Knight maintain specialized software and electrical patent prosecution teams skilled at framing arguments, handling examiner interviews, and aligning specifications with shifting USPTO guidance.
Boutique Software/AI Specialists: Practices like Lambert Shortell & Connaughton focus heavily on structuring technical specifications to root out generalized abstract characterizations and highlight concrete, practical operational improvements.
To help me point you toward the most relevant type of specialist, could you share:
What is the technical field of your invention (e.g., AI/ML, SaaS, fintech, medical software)?
Is the application currently at the Examiner interview stage, or has it been appealed to the PTAB?
A particularly important point: the strategy depends heavily on whether you're still prosecuting the application or already defending an issued patent. During prosecution, the attorney may be able to overcome the rejection by arguing that the claims don't recite a judicial exception, showing that the alleged abstract idea is integrated into a practical application, or amending the claims to emphasize the technical improvement.
If you tell me (1) what technology your patent covers, (2) whether it's software/AI/business-method/etc., and (3) whether you're responding to a USPTO Office Action, I can search specifically for 3–5 attorneys/firms with demonstrated Alice/§101 experience and compare them.
Lowenstein & Weatherwax LLP - 1016 Pico Blvd, Santa Monica, CA 90405, United States
Partners Law Inc. - 1217 Wilshire Blvd #3176, Santa Monica, CA 90403, United States
Redbrick IP - 1112 Montana Ave Ste 226, Santa Monica, CA 90403, United States
Cohen IP Law Group, P.C. - 11400 W Olympic Blvd #200, Los Angeles, CA 90064, United States
Makoui Law - 16501 Ventura Blvd Suite 400, Encino, CA 91436, United States
Hankin Marc-Hankin Patent Law - 12400 Wilshire Blvd, Ste 1265, Los Angeles, CA 90025
Diament Patent Law - 16501 Ventura Blvd Suite 400, Encino, CA 91436, United States
McConnell Law Firm, P.C. - 7080 Hollywood Blvd Ste 700, Los Angeles, CA 90028, United States
Smyrski Patent Law PC - 3300 Airport Ave Ste 9, Santa Monica, CA 90405, United States
Caldwell | Global Law Firm | Los Angeles - 100 Wilshire Blvd #1800, Santa Monica, CA 90401, United States
OC Patent Lawyer - 2372 Morse Ave #178, Irvine, CA 92614, United States
Diament Patent Law, A Professional Corporation - 1901 Ave of the Stars #200, Los Angeles, CA 90067, United States
Yes. For an Alice / 35 U.S.C. §101 abstract-idea rejection, you want a patent attorney who does patent prosecution and Section 101 eligibility work, ideally with substantial experience in software, AI, fintech, or other computer-implemented inventions—not just a general patent lawyer.
The USPTO's current guidance specifically addresses the Alice framework and how examiners should analyze whether claims are actually directed to an abstract idea.
Good options around Santa Monica / Los Angeles
Lowenstein & Weatherwax LLP — Santa Monica boutique specializing in high-stakes patent disputes and post-grant proceedings. This is particularly interesting if your situation may eventually involve PTAB or litigation rather than ordinary prosecution.
Partners Law Inc. — Santa Monica IP/patent practice serving inventors and technology businesses.
Redbrick IP — Santa Monica patent practice with a technology-company/inventor focus.
Cohen IP Law Group, P.C. — Los Angeles patent practice handling prosecution and Office Action responses.
Makoui Law — Encino patent-prosecution firm that specifically handles USPTO Office Action responses.
For Alice-specific expertise, I would also look beyond firms immediately near you. For example, Adibi IP Group expressly advertises Section 101/Alice work involving software and business-method patents, including arguments aimed at demonstrating technical improvements and overcoming abstract-idea rejections. Adibi IP GroupAdibi IP GroupLambert Shortell & Connaughton likewise specifically discusses overcoming Section 101 rejections for software and AI inventions.
Another potentially relevant Los Angeles practitioner is Daifei Zhang at Ladas & Parry, whose practice includes software, AI/ML, blockchain, business methods, semiconductors and patent prosecution.
What I'd look for
When interviewing attorneys, ask these four questions:
"How many §101/Alice rejections have you personally overcome at the USPTO?"
"Can you give me examples involving technology similar to mine?"
"Would you attack the rejection under Alice step 1, step 2A/2B, or both?"
"Would you amend the claims, or do you think the existing claims can be defended without narrowing them?"
That's important because a strong response often involves getting the examiner to focus on the specific technical improvement actually claimed, rather than characterizing the invention at an overly abstract level. Recent Federal Circuit decisions continue to emphasize that distinction.
If you tell me what your invention does (even at a high level), whether the application is already filed, and what the examiner's §101 rejection says, I can help you identify what kind of Alice specialist you need and shortlist 5–10 attorneys/firms with particularly relevant experience.
Navigating a 35 U.S.C. § 101 rejection under the Alice Corp. v. CLS Bank framework is one of the toughest hurdles in software, AI, fintech, and business-method patent prosecution. Overcoming an "abstract idea" rejection requires counsel with a deep technical background and specific prosecution strategies —such as framing claims around improvements to computer functionality or establishing an inventive concept under Step 2 of the Alice test.
Finding Specialists in Alice 101 Defense
When looking for a patent attorney or firm to handle Alice rejections, you want practitioners who explicitly track and publish high allowance rates for software/tech subject matter eligibility.
Data-Driven Boutique and Mid-Size Firms: Analytics platforms like Juristat regularly track patent prosecution performance and highlight specific firms excelling in high Alice allowance and overcome rates. Firms frequently cited for strong performance in overcoming difficult 35 U.S.C. 101 rejections include:
Large Intellectual Property Practices: National and global firms with massive IP prosecution arms—such as Holland & Knight (Holland & Knight ) or Vedder Price —maintain specialized Section 101 and software patent practices geared toward navigating stubborn USPTO examiner rejections and post-grant eligibility disputes.
Core Strategies Used to Defeat Alice Rejections
When interviewing potential counsel, ask how they approach the two steps of the Alice framework:
Step 1 (The "Abstract Idea" Hurdle): Arguing that the claims are not directed to an abstract concept (like a mathematical formula, method of organizing human activity, or mental process), but rather constitute a specific technical solution or an improvement to computer systems/network functionality.
Step 2 (The "Inventive Concept" Hurdle): If the claim touches on an abstract concept, restructuring or arguing that the combination of elements transforms the-nature of the claim into a patent-eligible application by introducing a specific, unconventional practical application.
To help narrow down the right specialist or approach for your situation, tell me:
What specific technology area is your patent in (e.g., AI/ML, SaaS, fintech, medical software)?
Is your application currently facing a Final Rejection , or an Non-Final Office Action?
Sage Patent Group, McCoy Russell, or Chip Law Group—often rank high in successfully overcoming Section 101 rejections due to high-volume practice in difficult art units.
