| William N. Hulsey
A Looking Glass for Ways to Succeed with “Alice” Patent Rejections
How to overcome Alice is the million dollar question in software patents. Each patent attorney you ask will provide a different solution. What is even more troubling is that even if you are successful in overcoming the Examiner’s reservations in a §101 (Alice) rejection, this may not be the end of the case.
Some art units have implemented a secondary review process, and whispers on the streets, indicate that some entire Art Units have closed up shop entirely by refusing to allow any issuance of patents.
We have heard from inventors in the software industry that some attorneys are recommending against filing of Applications in view of the increased difficulty in obtaining a patent. However, if you do not play the game, you will not win the game. The big players continue to file applications, and if you do not file, there is a risk that you will be left behind and lose any potential rights.
One approach that should be considered is the filing of a patent application with a no publication request. This provides the benefit that you are in the queue for patent examination, while maintaining the subject matter outside the public domain should be unsuccessful in achieving a patent. For all the doom and gloom surrounding Alice rejections, there remains some viable tactics that can be employed to advance the prosecution of patent applications. First and foremost, as is printed on the cover hitchhikers guide to the galaxy, “don’t panic”. Thousands of inventors and applicants are in the same boat as you are. Next, we strongly recommend all Applicants review the most recent Alice Guidelines and written examples provided by the Patent Office, which are available here.
Attention should be paid to each example that is most applicable to the application at issue, and where appropriate, modifying the claims language to align the application’s claims with approved claims of the relevant example. Subsequently, clearly explain the problem solved by the invention, and just as importantly, make sure the claims are directed to solving this problem. Clearly and precisely articulating the solving of this problem will go a long way both to drafting better claims, and providing clearer limits to the application for the Examiner to work with.
Always interview the case. Review the examiner’s comments, modify the claims again, and interview the case. Examiners are not inherently evil beings. Despite what it may seem, it is not in their interest to continue delay the allowance of an applications. Most examiners are more than generous with their time, their experience, and there recommendations.
We have found, that when given the opportunity to do so, examiners will happily explain at length, what their art unit is requiring in terms of structure and/or content, what cases involving similar subject matter that they have allowed, and, in the worst cases, which supervisor to call to clarify why the art unit is not allowing cases. Finally, if amending the Application is not advancing in its prosecution, play for time. We are periodically seeing the USPTO allow cases in some arts while actively stalling in other units.
Word around the water cooler is that examiners continue to undergo training, to clarify the Patent Office’s position on Alice related rejections, the office is continuing to issue updated instructions to the examiners, and it is no one’s interest for no patents in a field of invention to be issued. Basically, it will improve.
In the meantime, Applicants can avoid incurring additional expenses by avoiding unnecessary expenditures. This can be achieved in a number of ways. For example, an Applicant may delay receiving a further office action by filing a request to suspend examination, and/or filing an appeal. Both methods have their benefits and their potential drawbacks, and if you are interested in how this may apply to your case, we recommend seeking advice from your patent attorney.
The following YouTube video clip does a good job of capturing the issue: