In 2014, the Supreme Court rocked the patenting world when it held that electronic escrow services for facilitating financial transactions are abstract ideas not eligible for patent protection in the United States under 35 U.S.C. § 101, even when they are implemented by a computer. Alice Corp. v. CLS Bank
Even so, in the years that followed, the average allowance rate for Class 705 “software” utility patents dropped a whopping 20%, with the highest number of rejections in 3600 art units (encompassing, in particular, e-commerce and business methods).1 At the same time, software-related patents challenged in U.S. district courts have been struck down as patent ineligible six times more often than not in the post-Alice period.2
Key to both of these figures is that some software-related invention patents are surviving and even thriving. The overall number of software-related utility patent applications is up post-Alice.3
The question of the day, then, is: how to obtain, and be more likely to retain (upon challenge), that protection?
The years since Alice
What to claim.
- Inventions that do something. Inventions that make something happen, as opposed to evaluating or organizing something that already exists. Wherever possible, claim software that causes something tangible to happen, and consider focusing patenting resources on software that causes hardware/computer operation improvements (e.g., improvements to the processor, memory, displays, etc.). Likewise, avoid describing or claiming post-solution activity such as displaying, reporting, or printing.
- Computer-technology-specific claiming. Where possible, craft claims that are necessarily rooted in computer technology (e.g., websites).
- Avoid Group 3600. Craft claims to avoid USPTO examining groups with high 101 rejection rates (e.g., especially, groups 3600 and 3700).
How to claim.
- Name the specific technical benefit. Tailor your application and claims to a specific technical benefit afforded by the claimed invention (e.g., faster search times within a database, smaller memory requirements for a database, more dynamic information filtering, more efficient information filtering, producing more accurate image-sound synchronization, producing more realistic expressions or movement in animated characters
thanhave been created by human animators).4 Include a clear definition of the problem solved,and lay out the specific technical solution to that problem.5 As a corollary, don’t argue that the computer generally improves an existing system; instead, teach how the claimed invention improves the existing technology.
- Explain how the invention is not abstract. Actively attack the “abstract idea” prong of Alice analysis, using Enfish v. Microsoft, 822 F.3d 1327 (2016)6 and its progeny for support and guidance. The Federal Circuit found in Enfish that claims directed to software are not inherently abstract and can be analyzed at the first step of the Alice analysis. As yourself whether the claims are directed to an improvement to computer functionality.
- More independent claims. Consider including additional independent claims of varying scope, including the use of "means for" language to avoid a functional claiming trap.
- Recite the improvement steps. Recite the steps for improvement in the
claim language. In its November 2 (2016) Examiner Guidelines, the USPTO instructed its examiners that the key to the McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (2016), decision is that the claims included the rules for improving the animation and that the “human artists did not [previously] use the claimed rules[.]” Similarly, in Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018), the claimed invention involved a method of virus scanning that scans an application program, generates a security profile identifying potentially suspicious code,and links the security profile to the application program; the claims upheld as patent eligiblerecited specific steps to accomplish the result, which method realized an improvement in computer functionality.
Use the process.
- Use the interview. An interview with the examiner can be immensely helpful. Interviews not only help develop a rapport between the practitioner and the
examiner,but also provide an opportunity for the practitioner (or inventor) to describe technical details of the claimed invention to the examiner, with those potentially limiting statements rarely finding their way into the file history. Furthermore, 101 rejections generally are not applied consistently between art units and examiners. Examiners are sometimes willing to share their thoughts on 101 rejections (in general) and Alice (specifically) during an interview.
- Use appeals. If you believe there are good arguments for overcoming the 101-based rejections, yet the examiner appears entrenched in the rejection, consider prosecuting until other rejections (112, 102, 103) have been overcome, and then filing an appeal on the 101 rejections. Oftentimes, we find that fresh eyes and persistence get you where you need to be.
- Use continuations. If all else fails, narrow your utility patent claims to overcome a 101 rejection and file continuation applications. Additional decisions by the PTAB, Federal Circuit, and/or Supreme Court as the continuation application undergoes prosecution may provide further guidance on crafting or amending claims that avoid 101 rejections.
Finally, consider building other protections around the invention, including layered and diverse protection for software including copyright and trade secret protections, as well as design patents to protect the look of a computer monitor, handheld device, display, computer-generated icons embodied on displays, and fonts. See 35 U.S.C. § 171.
1. U.S. Patent & Trademark Office, Data Visualization Center, https://www.uspto.gov/dashboards/patents/main.dashxml.
2. March 2018: Eligibility Quick Reference Sheet, https://www.uspto.gov/sites/default/files/documents/ieg-qrs.pdf.
3. U.S. Patent & Trademark Office, Data Visualization Center, https://www.uspto.gov/dashboards/patents/main.dashxml
4. See, e.g., Finjan, Inc. v. Blue Coat Sys., Inc., Case No. 2016-2520, 879 F.3d 1299 (Fed. Cir. 2018) (virus scan that generates a security profile identifying both hostile and potentially hostile operations), available at http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2520.Opinion.1-8-2018.1.PDF; Visual Memory LLC v. Nvidia Corp., Case No. 2016-2254 (Fed. Cir. 2017) (enhanced computer memory system), available at http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2254.Opinion.8-11-2017.1.PDF; McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) (rules for lip sync and facial expression animation), available at http://www.cafc.uscourts.gov/sites/default/files/s15-1080.Opinion.9-9-2016.2.pdfproprotections
5. For example, one reason the computing devices claims in Core Wireless Licensing S.A.R.L., v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018), survived was because the claims were directed to an improved user interface and contained precise language delimiting the type of data to be displayed and how to display it, demonstrating the improvement in efficiency that mobile device users would have with the invention over conventional interfaces. Available athttp://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2684.Opinion.1-23-2018.1.PDF.proprotections
6. Enfish v. Microsoft, 822 F.3d 1327 (2016) (reversing district court ruling that Enfish’s asserted software claims were