Following the Alice Corp v CLS Bank decision in June 2014 the USPTO’s position with respect to patent eligible subject matter has changed.

But having swallowed the red pill just how deep does the rabbit hole go? What is and what is not patent eligible subject matter in the US?

A common refrain of the European patent attorney used to be “Well, this invention is highly unlikely to be patentable in Europe but do you have any interest in the US because things are different there…” Although the USPTO’s position still seems to be in flux, what does appear certain is that such statements no longer hold and new filings in the US that potentially relate to abstract ideas and laws of nature need to be assessed carefully before filing.

When making such an assessment, the official position can be found on the USPTO’s 2014 Interim Guidance on Subject Matter Eligibility page which details the 2014 interim guidance and the 2015 update on subject matter eligibility.

IPcopy can also recommend the Bilski blog which is assiduously tracking all things Alice and analysing section 101 issues in a detailed manner. It is a wealth of information and it’s refreshing to see some statistical analysis of how the courts and the USPTO are treating this evolving area of law rather than relying on anecdotal stories. Another resource in this area is Fenwick & West’s Decoding Patent Eligibility post-Alice site which includes a case analysis tool. Just pop in a keyword and see all the relevant PTAB, Federal Circuit and District Court decisions, both for and against patent eligibility (mostly “against”!).

So what strategies may be used while this area of law continues to develop in the US? Simply amending claims to link software to a computer is unlikely to cut the mustard. IPcopy has heard some US attorneys suggest that inventions could be claimed as hybrids between the software field and another arena, e.g. a mechanical field. Instead of claiming the software process per se, an application could explore whether there are any unique features that are made possible in an associated physical system by the software.

As an alternative, since each examining art unit at the USPTO implements Alice in a different manner, it may be possible to target friendlier art units* when filing an application. An application will apparently generally be routed based on the title of the application, the abstract and the claims. Removing business and finance related language from these areas of the application may therefore result in the application being sent to a more amenable location in the USPTO (e.g. “a method of encoding data” versus “a method of processing financial data”).

[*As noted on the Bilski blog the 3600 art units (the business method units) are particularly bad when it comes to allowing applications that have attracted a section 101 objection. Some of these art units issue rejections at rates well over 90% of the time.]

And for the patient, maybe the long game is a possibility. The situation may change in 5 years time so those in appeal or with deep pockets may see an improvement in the assessment of subject matter eligibility. But don’t bank on it!

Now if only SCOTUS had taken the blue pill we’d all have woken up believing what we want to believe…..

Mark Richardson 3 December 2015