How to Overcome Alice–based Section 101 Patent Rejections

July 26, 2017 Daryn Teague

As patent attorneys know all too well, the U.S. Supreme Court’s 2014 decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l had a dramatic impact on the prosecution of patent applications for computer software technologies. The issue in the case was whether certain patent claims on an electronic escrow service for facilitating financial transactions pertained to ideas that were ineligible for patent protection. The Court held that the claims were just an “abstract idea” and that implementing those claims on a computer was not enough to turn the idea into something that could be patented.

Since the Alice decision, courts have often invalidated software patents at an early “motion to dismiss” stage, casting a dark cloud over patent protection of computer-implemented inventions. The implications of the Alice decision on patent drafting and best practices for overcoming Alice-based Section 101 rejections was one of the hot topics covered in a webinar hosted recently by Reed Tech to provide IP practitioners with some practical insights on how to draft the most challenge-proof patent applications.

The webinar, “Optimizing Patent Applications: Drafting to Withstand Challenge,” can be viewed on demand by clicking here. The guest speakers were: Gene Quinn, a patent attorney, law professor and founder of IPWatchdog.com; and Joseph Root, an IP attorney, author of Rules of Patent Drafting, and founder of QualiPat.

This is the final installment in a series of three blog posts to recap some of the highlights from that webinar. View the previous two articles here and here.

Quinn and Root explained that the Alice decision laid out a new test for patent validity under Section 101 of the U.S. Patent Code, making it difficult to prove to the USPTO that software claims are more than an abstract idea. Unfortunately, the Alice decision did not define the term “abstract idea” – an omission that predictably led to litigation.

To clarify the implications, the USPTO issued guidance explaining how its patent examiners should evaluate claims for patent subject matter eligibility under Section 101:

  • (1) Is the claim directed to a process, machine, manufacture, or composition of matter?
  • (2a) Is the claim directed to a law of nature, a natural phenomenon, or an abstract idea? If yes, then
  • (2b) Does the claim recite additional elements that amount to significantly more than the judicial exception?

Then more recently, in the 2016 decision Enfish, LLC v. Microsoft Corp. et al, the Federal Circuit revived the hopes of software patent owners. The Federal Circuit upheld the validity of an Enfish patent, citing the test laid out in Alice, and writing that there is “no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice.”

“The Supreme Court has steadfastly refused to define the term ‘abstract idea’ even though it is essential to their extra-judicial test for patent eligibility,” said Quinn, in a recent blog post. “The Federal Circuit, seemingly uninterested in bringing any certainty to patent laws or Supreme Court pontifications, has said that if the Supreme Court does not need to labor to define the term ‘abstract idea’ then neither do they. See Enfish v. Microsoft.”

Indeed, Root walked webinar participants through a few additional Federal Circuit cases that offer more hope and guidance for trying to overcome Alice-based Section 101 rejections. The lessons learned from these recent cases for patent drafters include: Describe in detail the advantages of your disclosure over the prior art so it’s clearly functional and not abstract; Align the title used in your filed application with the broadest patent claim to make sure that it’s tied directly to those pending claims; and Specify a practical application for your disclosure in the patent claims in order to demonstrate it’s more than just an abstract idea.

Throughout the program, Quinn highlighted the value of IP software tools – such as LexisNexis PatentOptimizer® – to help patent drafters choose their words more wisely. He noted these tools can be used to flag prior usage of certain terms, identify on-point case references, suggest alternative terms for the application, alert you to terms or phrases that could be problematic in the courts and identify and rectify any claim anomalies. Created by patent attorneys for patent attorneys, PatentOptimizer® streamlines patent analysis and serves as an important Section 101 quality control check when drafting patent applications.

Please feel free to listen to a recording of the Reed Tech webinar on demand.

 

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