But the lack of clarity stemming from the Alice/Mayo tests destroys the prospects of quantum computing.

At the USPTO, similar challenges may arise, including challenges based on written description under 35 U.S.C. § 112(a) or definiteness under 35 U.S.C. § 112(b). U.S. patent law requires that a patent application contains a “full and clear description of the invention” (35 U.S.C. § 112(a)) and that the “specification concludes with one or more claims particularly pointing out and distinctly claiming the subject matter … [of the] invention” (35 U.S.C. § 112(b)).

As at the EPO, a patent examiner at the USPTO is likely to be unfamiliar with common terminology used to describe quantum computers, and the technology itself may be unintuitive. When addressing rejections based on either written description or definiteness, it can be helpful if the specification provides clear definitions of important claim terms—particularly those claim terms that read like jargon. Additionally, providing working examples illustrating how the technology is implemented (i.e., describing exactly how a quantum circuit is performed physically by sending certain signals to the qubit(s)) can be helpful in enabling the claims.

Another challenge that an Applicant is likely to face at the USPTO is that of subject matter eligibility under 35 U.S.C. § 101. Due to the subjective nature of subject matter eligibility doctrine, it can, unfortunately, be applied differently by different patent examiners, making a rejection sometimes difficult to overcome.

To try to avoid a subject matter eligibility challenge, it can be helpful to provide a clear, relatively simple description explaining the story of the invention and highlighting any inventive aspects of the claimed technology. Including this story can help an examiner better understand the inventive concept of the application, which is one part of the Alice/Mayo test used to determine subject matter eligibility.

Additionally, it can be helpful to describe how the claimed invention provides an improvement to the functioning of a computer, including to the quantum computer itself. U.S. courts have held that, where an invention improves a computer, it likely is subject matter eligible as it recites additional elements that integrate the judicial exceptions (i.e., the abstract ideas of the claim) into a practical application.