It seems like all anyone hears these days in the patent blogosphere is “Alice.” The case, Alice Corp. v. CLS Bank was decided well over a year and a half ago, but seems to have fundamentally changed the way patent attorneys and scholars think about, and talk about, software and business methods patents. The general consensus is that Alice has thrown a wrench into several practice groups at the USPTO and that the courts, as well as the USPTO itself, are not entirely sure how to interpret or apply the decision with any consistency. As such, we at Juristat are constantly being asked whether and how big data can simplify the process of applying for a business method patent in the post-Alice era. The most honest answer is that nothing in the law is absolutely predictable, but there are tools and strategies available to practitioners to at least clarify the process and help them make sense of the effects Alice is having on the USPTO.
Predicting Examiner Behavior
Another key strategy for attorneys prosecuting applications in Alice-effected art units is to know how their examiner has applied Alice in the past. The rate at which examiners issue Alice rejections varies widely from examiner to examiner, and it is advantageous to know where one stands with an examiner right from the start. Most patent analytics services offer some sort of examiner rejection history tool, wherein applicants can view their examiner’s previous rejections to figure out how he or she interprets the decision. Several questions every patent attorney should be asking before responding to an Alice rejection are:
- How many Alice rejections has the examiner issued?
- What does he or she consider to be the sticking points of the decision?
- How many applications that received an Alice rejection were eventually allowed?
Once an attorney has the answers to these questions in hand, the path to success in responding to an Alice rejection is considerably clearer.
In addition to examiner rejection history tools, many patent analytics services also offer a breakdown of the best way to respond to rejections. For example, some examiners rarely allow applications after RCEs, but are almost always reversed on appeal. In certain situations, it might be more advantageous to choose the more costly appeal process than filing several unsuccessful RCEs. Thus, an attorney’s chances of success in overcoming an Alice rejection can be significantly increased merely by knowing the examiner’s history from the beginning. With this information in hand, attorneys should then interview their examiner after the first rejection to find out exactly what he or she is looking for so that they can tailor their prosecution strategy to meet that examiner’s unique preferences.
Managing Client Expectations
It is no secret among patent attorneys that it is now increasingly difficult to obtain software and business methods patents. However, how and why this is the case may not always be immediately clear to clients and their patience in dealing with (and financing) a more complex prosecution is not without limits. They may not understand exactly why their application keeps getting rejected, and if they are going to blame anyone for this, it will most likely be their attorney. Just as an examiner’s rejection history can make prosecution more transparent for attorneys, the same information can also assist attorneys in managing their clients’ expectations regarding the difficultly and probability of obtaining their patent. Once an application has been assigned to an art unit and examiner, an attorney can lay out quite clearly to a client what the challenges will be.
For example, in e-commerce art units, Alice rejections make up the vast majority of all rejections issued, approaching as high as 80% in the 3690s. See Figure 1 (“Percent Alice Rejections in TC 3600”) for a breakdown of the percentages of Alice rejections in these art units. If your client’s application lands anywhere in the 3620s, 3680s, or 3690s, it is safe to say that prosecution is going to be a long, uphill battle and all patent attorneys should want to share this information with their clients up front. This will allow the attorney to explain the unique challenges that prosecution in these art units requires and reduce the risk that a client will blame the attorney for an unfavorable outcome.
Aligning Your Expertise with Clients Who Need It
The final, and perhaps most important, key to overcoming the effects of Alice is for attorneys to know how well their firms perform in prosecution of Alice-effected technologies. Using data, attorneys can uncover key metrics of success in these areas, such as their firm’s allowance rate, average speed to disposition, average number of office actions, and average independent and dependent claims lost, among others. See Figure 2 below for an example of how these indicia of success can be used to assist clients suffering from the effects of Alice.
As shown above, a hypothetical user can see his or her firm’s prosecution metrics in Alice-effected art units compared to that of a potential assignee client. The hypothetical user’s metrics in average office actions, average speed to disposition, and allowance rate are all an improvement over the results being delivered to the assignee by its current counsel. The attorney’s firm can use this information to establish itself as a more skilled firm for prosecuting software and business methods applications.
By having this information at their disposal, law firms can avoid wasting time and resources pursuing business opportunities that are not going to be profitable in the long run. Instead, they can more accurately tailor their business development strategies to attract more lucrative clients whose bottom lines may have been negatively affected by the effects of Alice. More than the typical hot air that is all too common in the world of law and business, firms can use data to actually prove to their prospective clients that they are the best choice for prosecution of applications for Alice-effected technologies.
While all patent attorneys would like for Alice to be applied with consistency and predictability across all examiners and art units, the application of law is rarely predictable due to the personal experiences and preferences of individual examiners. However, there are tools that patent attorneys can use to at least get a head start on prosecution of software and business methods applications and market their expertise to clients who are looking for it. No strategy is going to guarantee a positive outcome in every prosecution, but patent attorneys can certainly increase their chances of success through careful study of the relevant data available to them.