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.”
Accenture’s Matthew 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 economic benefits.