Scott Pojunas from
Hewlett-Packard outlined tips for preparation and prosecution
of patents post-Alice.
One was to recite technical
elements, including focusing your claims on a technical
solution to a technical problem, and tying the claims to
physical and tangible subject matter, particularly any novel
hardware elements. He said a useful test is to strike through
computer implementation in the claims – if the claim
still makes sense, it may fail the test under 101.
A second tip was to incorporate
fallback positions. This includes varying the extent to which
the independent claims are tied to specific technical
implementations or use cases, and using dependent claims to
capture specific technological improvements.
"Are software patents dead?"
asked Pojunus. "In my view, the answer is a clear no. I do
think the lower courts and the PTO have an extremely difficult
task ahead of them in drawing the lines that the Alice
court declined to draw. And I think it will be a bumpy road for
us as practitioners as the courts and Patent Office struggle
with these questions. Ultimately, I think the Supreme Court
will need to confront the difficult questions that it declined
to answer in Alice."
Weinstein noted a perception that software patents are doomed.
"The mainstream media would have us all believe that any
software specialized patent attorney should pack up and move
on. I certainly don’t agree. There is a pretty
wide spectrum [around 101]. You just have to know what that
spectrum looks like, how to identify where you are on that
spectrum, how to appreciate the likelihood of success, how to
advise your client and how to draft specifications in these
cases," he said.
He said there is a lot to learn
from the initial batch of post-Alice cases. There have
been three Federal Circuit decisions, all of which have held
the asserted claims unpatentable, and more than 10 district
court decisions, only two of which supported the patentability
of claims under 101.
"Where are we now? We still
don’t have any bright line tests," said Weinstein.
"We are still out in the dark and we have to look at these
cases that come down from the Federal Circuit and district
courts." He said the Ultramercial case at the Federal
Circuit is probably the most important one to watch now.
He concluded with some
post-Alice drafting strategies. These included:
organize specifications to emphasize technical operation of
specific aspects of hardware arrangements; discuss technical
benefits, specifically how the claimed invention makes the
system more efficient, more secure and so on; consider
including emphasis on why the invention cannot be performed by
a human with pen and paper; consider describing incorporated
abstract ideas to set the stage for why the claims include
"something more;" avoid summarizing the invention at too high a
level; and avoid discussion of non-technical benefits such as