While the U.S. Supreme Court’s Alice decision has led to a wave of software-related patents being invalidated by district courts, there are still opportunities for obtaining protection for such inventions.
Prior to filing a patent application, attorneys should conduct a careful investigation of a client’s claimed invention and focus on whether any technical problems had to be solved, as opposed to merely business process improvements, said Guy Gosnell, partner and lead of Alston & Bird’s Electrical, Software & Computer Science Patents Group.
“Attorneys need to get underneath the hood and ask what technical hurdles needed to be overcome in order to accomplish certain business solutions,” he said.
For instance, Gosnell said that if a company seeks to patent an online shopping experience that is more responsive to consumers’ orders than previous systems, the attorney should look closer at what may have led to that claimed invention.
“If consumers put items in an online shopping cart, and the claimed system responds before shoppers get bored and move on to another website, that alone is not currently patent eligible under the post-Alice regime,” he said. “But perhaps the attorney finds that a different memory structure, which stores consumers’ most frequently purchased items and locates pricing for items quicker, is the secret sauce behind the system being more responsive.”
In that case, the attorney could claim the unique memory structure, which as a byproduct allows for a more responsive user experience. Such an application would be more likely to satisfy Alice, he said.
“If that application only focused on the business advantages, it would be an uphill battle in light of Alice, to say the least,” he said.
Because the business method units of the U.S. Patent and Trademark Office (USPTO) are drawing a harder line with respect to patent eligibility than other units at the office, attorneys should draft claims in a way that could encourage nonbusiness method units to review the application, Gosnell said.
“To the extent you can increase the chances of an application being classified outside the business method area, you increase the likelihood of overcoming an Alice rejection,” he said. “However, attorneys should only do so if they aren’t doing a disservice to what they are trying to protect. It’s not worth re-working the claims of the application if their client ends up with claims that are not valuable or are not representative of the invention.”
Interviews can help attorneys get a sense of what particular examiners value in applicant responses and what arguments would fall on deaf ears, according to Gosnell.
Since one of the most useful prosecution strategies is trying to model the claims of a client’s patent application after claims that have already been found eligible by the USPTO or the courts, attorneys should have the office's Section 101 guidance handy, as well as the Federal Circuit's decision in DDR Holdings LLC v. Hotels.com LP, Gosnell recommended.
“If you can shape claims to be parallel to those found eligible in the USPTO’s guidance or the DDR case, you have a greater likelihood of success,” he said. “Examiners take comfort in finding claims eligible that courts or the office have already found to be similarly eligible.”
If the patent being prosecuted was written before the Alice decision, attorneys may be limited in what they can argue and may want to amend the claims, to the extent permitted by the specification, to show that the claimed invention recites “significantly more” than an abstract idea, Gosnell concluded.