Alice 101 patent defense specialists

Yes. If your application is being rejected by the USPTO under 35 U.S.C. §101 / Alice as directed to an “abstract idea,” you want a patent attorney with specific §101 prosecution experience, not merely a general patent lawyer.

A few firms that stand out from the current research:

• Finnegan — Particularly strong §101/Alice experience. Its attorneys have published extensively on Alice and Federal Circuit eligibility decisions, including cases involving software and computer-implemented inventions. Finnegan also has an Atlanta office, including partner Kevin D. Rodkey.www.finnegan.com
• Fish & Richardson — Strong patent prosecution and litigation practice, including recent PTAB work overturning a §101 rejection involving AI/business-method claims.www.jdsupra.com
• Perkins Coie — Worth considering if your invention is software/AI/Internet-related; look specifically for attorneys whose biographies mention patent eligibility and Federal Circuit practice.

What I'd look for in your attorney

The important distinction is prosecution vs. litigation. If you're currently trying to get an application allowed, prioritize someone who regularly handles:

1. USPTO §101/Alice responses and amendments
2. Appeals to the PTAB
3. Software/AI/computer-implemented inventions, if applicable
4. Federal Circuit §101 precedent
5. Claim drafting specifically designed to establish a technological improvement, rather than merely describing the desired result

The USPTO's current eligibility framework remains centered on whether a claim recites a judicial exception and, if so, whether additional elements integrate it into a practical application. www.uspto.gov Recent Federal Circuit decisions continue to emphasize looking at the specific claimed technological improvement, rather than characterizing the invention at an excessively high level of abstraction.law.justia.com

One particularly important point: don't assume that an “abstract idea” rejection means the invention is unpatentable. The response often turns on how the examiner characterizes the claim and whether the claims/specification adequately establish a specific technological improvement. Recent PTAB practice continues to produce reversals of §101 rejections on precisely those grounds.www.jdsupra.com

If you tell me (1) what technology your patent covers, (2) whether this is a USPTO office action or a patent that is already being challenged in court, and (3) your general location, I can search for 5–10 specific attorneys who have actually handled Alice/§101 cases in your technology area, including their relevant cases and firms.

If your patent application is repeatedly rejected under Alice Corp. v. CLS Bank (2014), I’d look for a patent attorney or firm with a demonstrated track record in overcoming USPTO § 101 abstract-idea rejections, particularly through office-action responses, claim amendments, and appeals to the Patent Trial and Appeal Board (PTAB).

The key is to find someone who understands both the legal framework and the technical substance of your invention. A general patent prosecution practice may not be enough if your examiner is repeatedly arguing that your claims merely implement an abstract idea on a generic computer.

When evaluating candidates, prioritize experience with:

• Alice/Mayo two-step analysis: challenging the examiner’s characterization of the claimed invention and establishing an inventive concept.
• Technical-improvement arguments: explaining how the claims improve computer functionality or another technical process, rather than simply automate an abstract idea.
• USPTO § 101 guidance and Federal Circuit decisions: applying relevant case law to the specific technology and claim language.
• PTAB appeals and examiner interviews: knowing when to argue, amend, interview, or appeal rather than continuing a cycle of unsuccessful responses.

Attorneys and firms worth contacting

I found a mix of firms with explicit § 101 resources and New Jersey patent-prosecution practices. I would distinguish firms that specifically discuss Alice rejections from local firms whose experience with this exact issue still needs to be confirmed.

1. Lambert Shortell & Connaughton

(Strong subject-matter match)

Software, AI and computer-implemented inventions

The firm has a dedicated article on overcoming § 101 rejections for software and AI inventions. It discusses identifying the actual technical problem and explaining how the claimed solution improves the technology. This is my first lead if your invention is software- or AI-related.lambertpatentlaw.com

Read its § 101 guidance

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2. Forsgren Fisher McCalmont DeMarea Tysver (Bitlaw)

Patent eligibility analysis and prosecution strategy

Its published § 101 resource series explains the Alice test and potential arguments against abstract-idea rejections. It is a useful lead for a consultation focused on the legal merits of your rejection. Confirm which attorney currently handles contested § 101 prosecution in your technology area.www.bitlaw.com

Read its Section 101 guidance

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3. Patent Law Firm of Michael Feigin

Clifton, New Jersey

A local-state option for patent prosecution, including office-action responses, examiner interviews and appeals. Ask specifically for examples of successful Alice-based § 101 rejections being withdrawn; the general prosecution services I found do not independently establish a specialized Alice track record.

Phone: (973) 625-1000

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4. Chiacchio IP, LLC

Atlantic Highlands, New Jersey

Offers patent application and broader intellectual-property services, including patent strategy and disputes. Worth screening if you want a New Jersey firm, but confirm that the attorney assigned has hands-on experience with difficult § 101 office actions and PTAB appeals.

Phone: (732) 526-3672

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5. Sleman & Lund LLP

Freehold, New Jersey

A regional patent-prosecution option with USPTO-registered practitioners. Ask whether a senior attorney can review your existing prosecution history and develop a fresh eligibility strategy, rather than simply prepare another routine office-action response.

Phone: (732) 795-0505

These are consultation leads, not a verified ranking of success rates. The strongest evidence of specialization among the sources I reviewed is the explicit § 101 guidance from Lambert Shortell & Connaughton and the Bitlaw resource. The local firms are additional candidates to screen, not confirmed Alice specialists.

My top two calls

After checking attorney biographies more closely, I would put these two at the top of your interview list:

• Dan Tysver — particularly strong for software, AI, data analytics and other computer-related inventions. His published biography specifically identifies subject-matter eligibility challenges as an area of experience. Attorney profile and contact information.forsgrenfisher.com+1
• David J. Connaughton — worth interviewing if you need prosecution strategy and potential PTAB appeal experience. His biography documents substantial patent prosecution experience and successful PTAB appeals, though not specifically an Alice success rate. Attorney profile.lambertpatentlaw.com

Questions to ask before hiring anyone

1. Can you give me two or three examples of applications where you overcame an Alice-based § 101 rejection in a similar technology area?
2. What was the strategy: claim amendments, a technical-improvement argument, an examiner interview, evidence, or a PTAB appeal?
3. Will you personally handle the case, and will you review the entire prosecution history before recommending a strategy?
4. What is the estimated cost for an initial assessment, another office-action response, and an appeal if necessary?
5. What are my upcoming deadlines, and what happens if the application is already under a final rejection?

The USPTO's own Manual of Patent Examining Procedure, § 2106 is useful background: it addresses both whether a claim is directed to an abstract idea and whether it integrates that idea into a practical application or provides significantly more.www.uspto.gov

Let me narrow this to the right specialist

One detail would help me make a much more targeted recommendation: what kind of invention is your application about?

1. Technology area

Software, AI or data processing

Business method or financial technology

Medical technology or diagnostics

Hardware, networking or cybersecurity

Other

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2. Current application status

First, non-final rejection

Repeated non-final rejections

Final rejection

PTAB appeal pending or under consideration

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3. Attorney location preference

New Jersey, New York or Pennsylvania

Anywhere in the US (remote representation is fine)

[Find the best-fit attorneys]

I can then prioritize attorneys whose documented experience matches your invention and procedural stage, rather than simply giving you a list of general patent lawyers.