A recent webinar about addressing section 101 issues in US patent prosecution following the Alice decision provided a handy overview of the best way to avoid and counter Alice objections and also helpfully highlighted the relevant USPTO patent eligibility examples to look at when drafting claims to different types of invention. A summary of some of the highlights of the webinar is presented below:
- In the District Court around 11,000 claims have been analysed and around 70% of all patents challenged using Alice have been found invalid. Delaware, California (Northern and Central) have been particularly bad districts as far as patentees are concerned.
- Only a very limited number of Federal Circuit cases since Alice have found claims under review to be patent eligible but there are a number of pending decisions which should start to hit in the coming months.
- Alice has had an effect across the USPTO but art units handling business method patents have been rejecting at rates of 85%. Unhelpfully, the application of Alice is not consistent across the Patent Office.
- Judge Wu in the US District Court for the Central District of California has been critical of Alice as have a number of other judges.
- USPTO Guidance can be found in a number of places:
- June 2014 – preliminary advice
- December 2014 – Interim Guidance
- January 2015 – Abstract idea examples
- July 2015 – an update including more abstract idea examples (cover guidance, additional examples, overview of all examples)
- Patent eligible inventions that meet the section 101 tests fall into a number of categories, at least some of which will sound familiar to European attorneys: specific control of a machine; remotely causing a device to carry out a task; improvement to a low level computer operation; specific improvement to an application running on a computer; using a computer to solve a problem that only exists in the realm of computing.
- For inventions relating to the computer control of machines, such as robotics, automobiles/aircraft, it is recommended to model claims after those found in the Diehr case and to include explanations of the improvements to the technology field. [It is noted that in the Diehr case, the claims detailed repeated measurements of the state of a machine, calculating a remaining operation time and then stopping the machine when the operation time expired. The invention solved a technological issue in a technological field and effected a transformation of an article into a different state.]
- For inventions relating to the remote control of a device, such as telematics or client/server instructions, it was recommended to look again to Diehr, DDR Holdings or example 21 from the USPTO.
- For inventions relating to computer operation such as OS improvements, device driver improvements or user interface improvements it was suggested to look to USPTO examples 1, 23 or 27.
- For inventions relating to computer applications such as image processing, encryption, security and the like, claims should be focused on bit/byte/block level operations. USPTO examples 1 and 27 were highlighted.
- Business method patents are harder to get through. An example of a successful counterargument to an Alice objection was to focus on the complex calculations that were being undertaken and to highlight that the speed of calculation that was needed and provided (not merely automation of a human task).
Mark Richardson 14 April 2016