Home » Patents » Alice in USPTOland

Alice in USPTOland

Keltie LLP

K2 IP Limited

About IPcopy

IPcopy is an intellectual property related news site covering a wide variety of IP related news and issues. We will also take the odd lighthearted look at IP. Feel free to contact us via the details on the About Us page.

Disclaimer: Unless stated otherwise, the contributors to IPcopy (the "IPcopy writers") are patent and trade mark attorneys or patent and trade mark assistants at Keltie LLP or are network attorneys at K2 IP Limited. Guest contributors will be identified.

This news site is the personal site of the contributors and is not edited by the authors' employer in any way. From time to time however IPcopy may publish practice notes, legal updates and marketing news from Keltie LLP or K2 IP Limited. Any such posts will be clearly marked.

This news site is for information purposes only. Information posted to this news site is not legal advice and should not be taken as such. If you require IP related legal advice please contact your legal representative.

For the avoidance of doubt Keltie LLP and K2 IP Limited have no liability as to the content of IPcopy and any related tweets or social media posts.

Privacy Policy

IPcopy’s Privacy Policy can be viewed here.

USFollowing 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


Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s

This site uses Akismet to reduce spam. Learn how your comment data is processed.

%d bloggers like this: