1. 101 Issues in the US Middleton Reutlinger MIDDLETON REUTLINGER
Scott W. Higdon
Middleton Reutlinger
401 South Fourth Street
Suite 2600
Louisville, KY
(502) (direct)
(502)
MIDDLETON REUTLINGER

2. Current State of Computer Implemented Inventions - The Impact of Alice

3. Alice’s Court Impact By the Numbers
101 Decision from Alice (6/19/14) to 8/26/15 *Source:

4. Alice’s Court Impact By the Numbers
*Source:
Courts invalidated more patents in the 14 months since Alice, than they did in the five years previous to Alice

5. Alice’s USPTO Impact By the Numbers
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

6. Alice’s USPTO Impact By the Numbers
% of Final Rejections with 101 Rejection –
Before and After Alice (through June 2015)
*Source:

7. Alice’s USPTO Impact By the Numbers

8. Alice’s USPTO Impact By the Numbers
% of all Actions with 101 Rejections in Tech Center 3600 Work Groups
Alice
*Source:

9. Alice’s USPTO Impact By the Numbers
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

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

11. Guidelines

12. Guidelines 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”

13. Is Means Plus Function a Safe Harbor?
Despite downfalls of means plus function, it may be a viable option for addressing 101 in some situations.
PTAB Appeal (11/633,647)
Decided 7/16/15

14. Is Means Plus Function a Safe Harbor?

15. Is Means Plus Function a Safe Harbor?
Other claims did not survive 101 scrutiny

16. Claims and Areas That Present Problems

17. Many Art Units Are Problematic
% of Final Rejections with 101 Rejection –
Before and After Alice (through June 2015)
*Source:

18. Claims that Easily Map to an Identified Abstract Idea

19. Prospects on Appeal

20. Prospects on Appeal 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.”

21. Practical Tips

22. Practical Tips for Specification
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

23. Practical Tips for Claims
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

24. Interview 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.