Go ask Alice; I think she’ll know

The Importance of Alice Considerations on Patent Filings

With apologies to Jefferson Airplane, a critical, and early, point in the patent prosecution process, is to consider if the invention is an abstract concept or is in fact a transformative invention.

In 2014, the Supreme Court issued its decision in Alice Corp. v. CLS Bank Int’l, which significantly changed the landscape for patent eligibility under Section 101 of the Patent Act. The Alice decision held that an invention is not patent-eligible if it is directed to an abstract idea, a law of nature, or a natural phenomenon.

The Alice decision has had a significant impact on patent filings, particularly in the software and technology industries. Many software and technology inventions can be characterized as being directed to abstract ideas, laws of nature, or natural phenomena. As a result, patent applicants in these industries must carefully consider Alice issues when drafting their patent applications.

There are a number of things that patent applicants can do to address Alice issues in their patent applications. First, patent applicants should carefully identify the inventive concept of their invention. The inventive concept is the novel and non-obvious part of the invention that distinguishes it from the prior art. Once the inventive concept has been identified, patent applicants should focus on drafting claims that recite the inventive concept in a manner that is not directed to an abstract idea, law of nature, or natural phenomenon.

Patent applicants should also consider including additional elements in their claims that may help to distinguish their invention from an abstract idea. These additional elements may include, for example, real-world components, limitations on the use of the invention, or specific technical features.

Finally, patent applicants should be prepared to defend their patent applications against Alice challenges. If a patent examiner raises an Alice challenge, patent applicants should carefully consider the examiner’s arguments and develop arguments in support of the patentability of their invention.

The Alice decision has made it more difficult to obtain patents for software and technology inventions. However, by carefully considering Alice issues when drafting their patent applications, patent applicants can increase their chances of obtaining a patent for their inventions.

Here are some additional tips for addressing Alice issues in patent filings:

  • Focus on the practical application of the invention. The more the invention is tied to a practical application, the less likely it is to be considered an abstract idea.
  • Use specific language in the claims. The more specific the claims, the less likely they are to be considered an abstract idea.
  • Avoid using broad terms such as “method,” “system,” and “apparatus.” These terms can be interpreted broadly and may make the claims susceptible to an Alice challenge.
  • Consider including additional elements in the claims. These elements can help to distinguish the invention from an abstract idea and make it more likely to be patentable.
  • Be prepared to defend your patent application against an Alice challenge. If a patent examiner raises an Alice challenge, be prepared to develop arguments in support of the patentability of your invention.

By following these tips, patent applicants can increase their chances of obtaining a patent for their inventions despite the challenges posed by the Alice decision.

JOHN AND MORGAN is a versatile law firm that handles Intellectual Property work such as Patents, Trademark, and Copy. We also do Family Law cases such as Divorce, Child Support, and Child Custody. We also do Wills and Estate Planning.

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