STRATEGIES FOR PATENT ATTORNEYS TO PROTECT SOFTWARE RELATED PATENTS IN VIEW OF ALICE CORPS.

Alice Corps. is the most recent famous case decided by the Supreme Court related with software patent eligibility.  The claims in Alice Corps were directed to hedging risks in commodities trading, wherein the methods of hedging risks were somewhat known in the field. Citing Mayo, the Supreme Court applied the two prong test for an “abstract idea”, the prongs being 1) are the patent claims drawn to an abstract idea, and 2) if so, is there anything else in the claims as inventive concept that is significantly more than the ineligible abstract idea?

So what is an “abstract idea?” In Alice, the court refused to delimit the contours of abstract ideas, but stated that abstract ideas are fundamental/longstanding economic practices, certain methods of organizing human activity, an idea itself, mathematical relationships and formulas.

Accordingly, if your invention is geared towards a somewhat abstract idea, the way you can product yourself is using the “significantly more” standard, but what is significantly more? The court stated that improving a technology or technical field, improving the functioning of the computer itself, or providing meaningful limitations beyond generally implementing the abstract idea on a computer, can by “significantly more.” Accordingly, using this test, the Supreme Court essentially stated that reciting hardware processing in computer programs will no longer make a patent eligible, and that claims “requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.”

Therefore, as a patent attorney, the best way to overcome the 101 rejections will be via including detailed examples of the implementation of your invention, while making sure these implementations increase the speed/power of the computer. For example, if your invention uses a cache memory over standard memory that is stored on a backend server, including these descriptions of what is actually being completed at  functional level may increase the odds of a granted patent.

Additional ways to amend standard claim drafting will be to include longer preambles. By including preambles that describe what is being done, some judges/examiners may classify patents in different categories, which may help alleviate issues from the start.

Arguments that can be made are the non-abstractness is created by elements not taught or suggested by the prior art. If the invention was directed towards longstanding practices, then the prior art should disclose the limitations of the invention?

With this in mind, Alice Corps certainly changes how patent attorneys and patent examiners view software patents. Further, in my opinion, Examiners have been quick to slap a 101 rejection for anything software related and have been holding tight on these rejections. Because of this, I have been advising my clients who wish to get software related patents that it will probably be an uphill battle to obtain these software or mobile application related patents.

By | 2015-03-12T14:43:34+00:00 March 12th, 2015|Blog|Comments Off on STRATEGIES FOR PATENT ATTORNEYS TO PROTECT SOFTWARE RELATED PATENTS IN VIEW OF ALICE CORPS.