Are USPTO Examiners beginning to issue blanket “Alice” objections against software patent applications? How should such patent applications be presented? How might this develop going forward? And, what should we be doing (if anything) to address it?

An eagle-eyed colleague here at Keltie (thank you Peter Kent) spotted a discussion online last week that suggested that, in the wake of the Alice v CLS Bank decision from the Supremes,  Examiners at the USPTO might be beginning to issue blanket objections under 35 U.S.C. 101 to patent applications containing software-implemented inventions.

IPcopy reached out to William Jividen at Dinsmore & Shohl LLP in the US to see if this was the case. The discussion below has been distilled from Bill’s comments and other comments seen online. Any mistakes or inaccuracies may be attributed solely to me!

The suggestion that the USPTO may be beginning to use the Alice decision in anger is an interesting one from the European perspective. European patent attorneys are often presented with inventions, such as those emanating from the financial services sector, where it is clear that obtaining patent protection in the UK or Europe  is going to be a hard task. At some point during a meeting with the inventor/client there will probably be a discussion about the US patent system and how it may be easier to gain patent protection in the US. However, if the USPTO is beginning to issue abstract idea based objections more frequently then such advice may need modifying slightly to highlight that the situation in the US is in flux.

As it turns out Bill confirmed that the USPTO has started to issue blanket rejections on software related method claims that implement steps via a processor. This rejection reads as follows:

“Claims… are rejected under 35 U.S.C. 101 because the claimed invention is directed to non statutory subject matter. In the instant invention, the claims are directed towards the concept of… [This] is considered a method of organizing human activities, therefore the claims are drawn to an abstract idea. The claims do not recite limitations that are “significantly more” than the abstract idea because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. It should be noted the limitations of the current claims are performed by the generically recited processor. The limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. Therefore, claims… are directed to non-statutory subject matter.”

The appearance of such a boilerplate rejection may be regarded as a little surprising. It should be recalled that the initial guidance provided by the USPTO to examiners does not suggest that such rejections should be issued. In fact, the USPTO’s Deputy Commissioner stated in the initial guidance (see page 2, paragraph 4) that “the basic inquiries to determine subject matter eligibility remain the same as explained in MPEP 2106(I).”

So it would seem the Examiners may be getting ahead of themselves.

There is also a question as to whether existing case law relating to computer programs remains good case law. Bill pointed out to me that a number of courts have held that computer program code connotes structure.  For example, in Altiris, Inc. v. Symantec Corp., the Federal Circuit noted that “‘commands’ represent structure (in the form of software).” [318 F.3d 1363, 1376 (Fed. Cir. 2003)].  In another example, in Aloft Media, LLC v. Adobe Systems Inc., a district court found “computer code” for performing a specific function as being analogous to a “circuit” for performing a specific function, and found that such claim limitations include sufficient structure even to avoid means-plus-function treatment [570 F.Supp.2d 887, 897-98 (E.D. Tex. 2008)].  See also Affymetrix, Inc. v. Hyseq, Inc., 132 F.Supp.2d 1212 (N.D. Cal. 2001) (finding that “computer code” connotes sufficient structure even to avoid means-plus-function treatment); and Rowe Int’l Corp. v. Ecast, Inc., 586 F.Supp.2d 924 (N.D. Ill. 2008) (finding that memory including “instructions” for performing specific functions connotes sufficient structure even to avoid means-plus-function treatment).

So, if the USPTO are beginning to issue such objections what should be done to minimise the chances of such an objection being raised in the first place and maximise the chances of overcoming such an objection if it is raised?

Reciting command terms and instructions in the claims (if you can) may allow the argument that the claims recite “structural” limitations that are “significantly more” than the abstract idea to be run. This is because such claims should be regarded as reciting meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Rather such claims would be linked to a particular machine as such case law noted above makes clear that such claim limitations connotes structure sufficient even to avoid means-plus-function treatment.

It is also suggested that including a flowchart of the inventive concept and a block diagram of a computer system is now important as this will allow the argument that the claims are considerably more than an “unspecified, generic computer” in that the flowchart is an “improvement to the functioning of the computer itself.”  It has also been recommended that during drafting to add an additional figure of the hardware logic design that discloses a hardware implementation of the flowchart.  This will help support the argument that the specific implementation shown by such a figure makes clear that a limitation in the claim qualifies as “significantly more” than the abstract idea.

Will the above approaches help? Ultimately this may take more cases going through litigation which could mean years of uncertainty.

And what of the Alice patents? Could any of these have been saved by approaching them in the above manner? It is interesting to note that US5970479 comprised 101 figures which covered the structure and process flow of the system in question. Perhaps if the claims had been reformulated during prosecution in this manner then this would have moved them away from being “considered a method of organizing human activities.”

IPcopy has also seen discussion online that the USPTO is actually moving to pull back cases where a notice of allowance has been issued. Has anyone seen evidence of this?

Mark Richardson 29 July 2014