The Supreme Court’s decision in Alice v. CLS Bank has significantly altered how patent claims are analyzed by patent examiners for certain art units. The 2014 ruling had lead to a host of new rejections under 35 U.S.C. §101 in the past several years, particularly in art units under tech center 3600.
A typical Alice rejection issued by an examiner states that because the claims are drawn to an abstract idea, they, therefore, are not patent eligible subject matter under § 101. For patent applications that deal with subject matter involving TC 3600, Alice rejections have lead to plummeting allowance rates; some art units have allowance rates as low as 1.3%. Moreover, as time has progressed, allowance rates have continued to trend downward. This is counter-intuitive and very frustrating for patent practitioners, given that the USPTO has issued three series of guidelines to advise attorneys on how best to deal with the aftermath of Alice.
These trends seem to indicate that patent practitioners cannot approach prosecuting applications like they used to. So what can attorney do to increase their chances of overcoming Alice rejections? Many patent attorneys are turning to technology to supplement their understanding of why examiners are issuing Alice rejections at such a high rate and how to overcome them. By combining data analytics with a more personal, communication-based approach to prosecution, attorneys can increase their likelihood of success in overcoming Alice rejections.
While just one piece of the prosecution puzzle, prosecution software can equip practitioners with data that can lead to more informed and productive conversations and interviews with their assigned examiner. Analytics software like LexisNexis PatentAdvisor ® can provide attorneys with statistics at the beginning of the prosecution process that will help them determine the best course of action for overcoming Alice.
Examiner interviews are an effective way to overcome rejections as a face-to-face or telephonic discussion can quickly get to the heart of the examiner’s rejection, the legal basis behind it, and what the examiner needs from you to overcome it.
For example, If you are facing an examiner with a low allowance rate and a high rate of §101 rejections, you can use PatentAdvisor ™ data in your interview to leverage successful arguments made by applicants who faced similar rejections before the same examiner. By drawing your examiner’s attention to data from applicants who have overcome the same rejections, despite the low allowance rate, you will give them a sound basis for decision-making, and in turn you will give the examiner confidence in their decision to allow your application.
This is just one example of how patent attorneys can utilize legal tech to effectively navigate the confusing post-Alice prosecution landscape.