Middleton Reutlinger

Scott W. HigdonMiddleton Reutlinger401 South Fourth StreetSuite 2600Louisville, KY 40202(502) 625-2777 (direct)(502) 588-1943shigdon@middletonlaw.com

101 Issues in the US

MIDDLETON REUTLINGER

Current State of Computer Implemented Inventions- The Impact of Alice

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Alice’s Court Impact By the Numbers

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101 Decision from Alice (6/19/14) to 8/26/15 *Source: www.bilskiblog.com

Alice’s Court Impact By the Numbers

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*Source: www.bilskiblog.com

Courts invalidated more patents in the 14 months since Alice, than they did in the five years previous to Alice

Alice’s USPTO Impact By the Numbers

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- The numbers at the USPTO aren’t pretty either

- However, the numbers vary wildly by Art Unit (AU)

- Thus, application technology strongly influences impact - More accurately, what AU your

application is assigned to strongly influences impact

Alice’s USPTO Impact By the Numbers

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% of Final Rejections with 101 Rejection – Before and After Alice (through June 2015)

*Source: www.bilskiblog.com

Alice’s USPTO Impact By the Numbers

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Alice’s USPTO Impact By the Numbers

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% of all Actions with 101 Rejections in Tech Center 3600 Work Groups

*Source: www.bilskiblog.com

Alice

Alice’s USPTO Impact By the Numbers

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• Post-Alice Allowance Rates: A glimpse at the disparity by art unit– AU 3622 (DATA PROCESSING: FINANCIAL,

BUSINESS PRACTICE, MANAGEMENT, OR COST/PRICE DETERMINATION)• 6% Allowance Rate

– AU 3664 (DATA PROCESSING: GENERIC CONTROL SYSTEMS OR SPECIFIC APPLICATIONS)• 77% Allowance Rate

What is the USPTO looking for in a claim? - Decisions and Guidelines provide *some* insight

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Guidelines

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Guidelines

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Common Themes for “something more”– “solve an Internet-centric problem with a claimed

solution that is necessarily rooted in computer technology.”– “necessarily rooted in computer technology to overcome a

problem specifically arising in graphical user interfaces.”

– “claim does not merely recite the equation in isolation, but integrates these ideas into the molding process.”

– “additional limitations amount to more than simply stating ‘apply the abstract idea on the Internet’”

– “improve the functioning of the claimed computer itself”

Is Means Plus Function a Safe Harbor?

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• Despite downfalls of means plus function, it may be a viable option for addressing 101 in some situations.

• PTAB Appeal 2012-012464 (11/633,647)– Decided 7/16/15

Is Means Plus Function a Safe Harbor?

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Is Means Plus Function a Safe Harbor?

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• Other claims did not survive 101 scrutiny

Claims and Areas That Present Problems

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Many Art Units Are Problematic

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% of Final Rejections with 101 Rejection – Before and After Alice (through June 2015)

*Source: www.bilskiblog.com

Claims that Easily Map to an Identified Abstract Idea

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Prospects on Appeal

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Prospects on Appeal

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• Still Early, but post-Alice stats show:– 14 “successful” 101 Appeals – 124 unsuccessful 101 Appeals

• Unlikely to be resolved in pre-appeal brief conference

• Continue to monitor after appeal brief filed– MPEP 1205 mentions “the filing of a

supplemental brief … if new authority should become available.”

Practical Tips

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• Explain Technical implementations in detail– Stress any improvements in functioning of computer

or other hardware

• Emphasize technical solution to technical problem

• Move beyond generic computer description• Use technical terminology• Tie into “machine” or “transformation” where

possible

Practical Tips for Specification

• Draft method and system claims differently• Draft and prosecute narrow claims first

– Ensure support for broader claims• Present substantive system claims first• Avoid limitations that read on “mental

steps”• Draft Title, Abstract, Summary, and Claims

with Art Unit in mind

Practical Tips for Claims

• Interviews can lead to quick resolution in some cases.

• At a minimum, it provides insight as to whether 101 can be resolved with the Examiner, or if Appeal or other routes are necessary.

Interview