A Revolutionary Approach to Obtaining Software Patents Without Appealing to the PTAB

By Robert Plotkin & Cynthia Gilbert
September 27, 2017

In this article we describe a revolutionary approach that we use to obtain defensible and commercially-valuable software patents for our clients in light of the unpredictable and anti-patent appeal process at the current Patent Trial and Appeal Board (PTAB).  We use the word “revolutionary” in part because this approach is radically different than the traditional approach of appealing as a matter of course after a patent application has been rejected multiple times, and also because this strategy mirrors that used by the American “irregulars” in the Revolutionary War against the British Army (with the historic sites of Lexington and Concord down the road from my old office, we’re constantly reminded of the strategy and tactics that the patriots deployed) .  Although this strategy can be used successfully for any kind of patent, it is particularly applicable to software patents, in light of the specific challenges associated with obtaining patents of this type.

In the old days, the standard approach to obtaining a patent was to file a single patent application for an invention, containing claims that covered the invention as broadly as possible, and then to fight for those broad claims as vigorously as possible.  If attempts to convince the examiner failed, and if the Examiner seemed to be unwilling or unable to listen to reason, the next logical step was to file an appeal (with what was then called the Board of Patent Appeals and Interferences (BPAI)).  An appeal was seen as a way to obtain a review of the patent application by a panel of judges who were more familiar with the law, more objective, and more likely to be even-handed than the examiner.  Although the appeal process was slow and relatively expensive, it was viewed as way to obtain a rational decision about the patentability of the claims, based on the current state of the law, when the examiner had failed to do so.  The relatively long wait and high price tag of an appeal was justified by the relatively high likelihood of obtaining broad claims in what might be the only patent on an important invention.

The situation today is radically different for many reasons, and the old tried-and-true process of filing an appeal to obtain a just result is no longer seen by many law firms and their clients as the prudent course of action.  As just a few examples of ways in which the patent examination landscape has changed:

  • The Alice decision has made it substantially more difficult to obtain allowance of broad claims, particularly in software and other process patents, both during prosecution and on appeal.
  • The KSR decision and resulting lowering of the nonobviousness bar has made it more difficult to distinguish broad claims over combinations of prior art.
  • The PTAB has shown itself to be unpredictable and, many have claimed (and my own experience confirms), to have an anti-patent bias.
  • Appeals are as expensive and slow as ever.
  • The availability of post-grant procedures for invalidating patents at the PTAB means that even if an appeal results in the allowance of a patent, that patent is subject to invalidation in the PTAB later at relatively low cost to an infringer.

Many law firms and clients have looked at this situation, thrown up their hands, and given up the fight for software patent applications after being unable to convince an examiner in a few rounds of prosecution.  Some have even concluded that software can no longer be patented or that it isn’t worth the time and financial investment to even try.

My colleagues and I have taken a different approach, one which has resulted in continued patent grants for our clients for their software and other technology.  Despite all of the challenges posed by the PTAB and the USPTO more generally, it is not only still possible to obtain software patents in the U.S., it is possible to obtain software patents that are defensible and commercially valuable in the sense that they squarely cover the client’s technology and that of competitors, both today and into the future.  But this kind of success requires a revolutionary approach that replaces the old and straightforward, “file, amend, appeal” strategy.

Today’s environment demands an agile approach, one that involves substantial up-front planning, followed by continuously learning from both the client and the marketplace, using a strategy that involves constructing a defensive and offensive patent portfolio from a collection of laser-focused patents, rather than a single overarching patent intended to cover the invention in one fell swoop.  Just as the American revolutionaries knew they didn’t stand a chance by facing the British army head-to-head in a single rigid formation, they succeeded by distributing their offensive and defensive resources into a multitude of smaller positions, often hiding in hay wagons and behind stone walls, to stage their attacks in a distributed fashion, rapidly retreating and retrenching.  So too is it necessary today for innovative companies to develop successful patent portfolios by dividing their patent rights into smaller pieces, staged over time. This empowers innovators as they can avoid the need to engage in large-scale battles that they are unlikely to win, while also reinforcing the strength of their portfolios as a whole through interlocking and mutually-supportive protection that evolves with the marketplace. While this strategy requires patience and more patents, it ultimately unlocks defensible commercial value.

More concretely, the strategy that we typically follow nearly always avoids the need to appeal, and therefore avoids the pitfalls of the PTAB, as follows.  The foundation is to write a solid and comprehensive patent specification, one that is intended to cover the invention both broadly and deeply, in an effort to enable as many embodiments as possible for as long into the future as possible, encompassing both the client’s and competitors’ technologies.  The first patent application that we file, however, typically has relatively narrow claims for a variety of strategic reasons, such as:

  • Avoiding abstract idea rejections under Alice
  • Focusing the claims on the client’s current and near-term commercial products and services
  • Avoiding the prior art by making clear distinctions within the claims
  • Avoiding clarity rejections by using concrete rather than abstract language

In our experience, these initial patent applications often sail through the USPTO relatively smoothly, without the need to appeal to the PTAB, resulting in a variety of benefits to the client:

  • Obtaining a first patent more quickly and inexpensively than would occur with broad claims. Having a patent in hand sooner—sometimes by several years—can be particularly valuable to startup companies seeking investment and acquisition opportunities
  • The first patent covers the client’s existing commercial products and services, and thereby achieves what is commonly the client’s primary goal for patent protection
  • Establishing a cooperative and trusting relationship with the Examiner
  • Avoiding the PTAB and the associated cost, delay, and uncertainty

Then we periodically revisit the patent specification, our client’s business goals, and the competitive landscape, and decide whether additional patent claims would be valuable to pursue.  The key point here is that the passage of time enables us to make this decision about additional patent protection in light of how the market has evolved in the years since the patent application was filed.  We now have significant additional information about the client’s technology, their competitors’ technology, and the value of that technology.  This enables us to write claims—based on the original specification which was written with a long-term strategy in mind—that are informed by all of this additional and up-to-date information that is now at our disposal.  As a result, we can file continuation applications that contain the next most commercially valuable set of claims, something that would have been difficult or impossible to do at the time of filing the original patent application due to the lack of information available at that time. By virtue of this strategy, we also keep our client’s options wide open.

We can continue this strategy over the 20-year term of the original application to incrementally expand the protection obtained by the client through a series of continuations (and possibly continuations-in-part).  The result is a portfolio of defensible and commercially valuable claims which, due to their relatively narrow scope, are much less likely to encounter the kinds of problems with Alice, obviousness, and lack of clarity often encountered with broader claims.  Such claims are also less susceptible to invalidation later in the PTAB and the courts for all of the same reasons.  And the relatively large number and diversity of claims means that even if some of the claims are invalidated later, doing so imposes a higher cost on the defendant, and other claims are likely to remain defensible and standing.

Some may wonder whether the strategy I’ve described is another “game of kings,” suitable only for large companies.  Nothing could be further from the truth.  We regularly use this strategy with individual inventors and startup companies, who benefit from it because it obtains the most important protection for them as early in the process as possible, and limits prosecution costs per patent by reducing the number of rejections received per patent on average.  It also eliminates the need to appeal in almost all cases, thereby avoiding the associated costs. Ultimately, patent issuances are designed to match business objectives, and as a business grows we’re able to pursue new and ‘most relevant’ claims.

Furthermore, although individual inventors and startup companies might think that their inventions are not extensive enough to justify or support multiple patent applications, often this is not true.  As the market evolves, we often find that earlier patent claims, no matter how well-planned, do not cover the client’s existing products or competitors’ products with the high degree of precision required of patent claims.  As a result, it may be necessary, and extremely valuable, to always keep a continuation pending in order to preserve the ability to file slightly different claims in order to ensure that the client’s patents clearly cover both their own technology and that of their competitors.

Despite everything we have said, there is still a place for appeals to the PTAB, but only in very limited situations, in our experience.  For example, sometimes an examiner refuses to concede a position that is undisputedly wrong on the facts or the law, and continues to reject claim amendments no matter how clearly and specifically they distinguish over the prior art.  We have also found that appeals are more likely to succeed in overcoming rejections based on nonobviousness than patentable subject matter, written description, or enablement.  Even in cases in which an appeal is filed, we always recommend considering filing a continuation application in parallel.

And in today’s world of big data, we have the ability to leverage fine-grained, up-to-date empirical data about the USPTO as a whole, individual art units, and even individual patent examiners, using services such as PatentAdvisor.  This enables us to use a data-driven approach formulate our strategy in individual cases to make decisions such as whether to appeal, file an RCE, seek an interview, or take any of a variety of other actions.  Although cookie-cutter strategies have never been in the client’s best interest, today we no longer have an excuse for not formulating a strategy that is based both on the client’s business goals and the empirically-demonstrated probabilities of success of different prosecution strategies.

The America Invents Act (AIA) and the PTAB have radically altered the patent prosecution landscape.  Instead of giving up, we respond with a radically different strategy for our clients to create lasting and valuable patent portfolios that are designed to withstand attacks in the PTAB and the courts.  Although we appreciate all of the efforts underway to reform the PTAB and strengthen the rights of patent owners, we and our clients do not have the luxury of waiting for these efforts to succeed.  Instead, we will continue to leverage the existing system for the benefit of our clients, and hope that our colleagues at other leading firms can do the same by following the strategy we’ve described.

Special thanks to Steve Gold and Van Smick for input and feedback on this article.

The Author

Robert Plotkin

Robert Plotkin is a founding partner of Blueshift IP. Attorney Plotkin has been a leader in obtaining software patents for over two decades, and consistently obtains software patents for clients even after the Alice Supreme Court decision and the passage of the AIA.

For more information or to contact Attorney Plotkin, please visit his Firm Profile Page.

Robert Plotkin

Cynthia Gilbert is a founding partner at BlueShift IP. Her practice focuses on the strategic development of patent portfolios for a range of computer technology companies in all stages of the invention life cycle: start-ups, emerging companies, and established public companies. She has developed deep experience across a wide range of technology disciplines, including virtualization, cryptography, network security, artificial intelligence, natural language processing, cloud computing, mobile technologies and applications, operating systems, and communications infrastructure. She is honored to have worked for clients ranging from the smallest start-ups to billion-dollar companies and brings a lifelong passion for technology to her work with every client.

For more information or to contact Ms. Gilbert, please visit her Firm Profile Page.

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Discuss this

There are currently 26 Comments comments. Join the discussion.

  1. A reader September 27, 2017 8:13 am

    Thanks for this article. To summarize, you suggest:
    1) drafting a thorough spec
    2) pursuing narrow claims first
    3) file continuations
    I agree this may be a prudent approach. But I wonder if it is as “revolutionary” and “radically different” as you suggest.

  2. Pro se September 27, 2017 8:42 am

    I have patents that are rated top AA in the Unified Patents system.. have a spec and claims that meet this article suggestion… easily beat 2 waves of IPRs… on the 3rd wave, the PTAB accepted 10 total references to institute..

    It comes down to the ratio of attacks and by the 3rd attack the PTAB will institute on 10 references just so you can fight within the process because they feel it’s their duty to execute the process.

    They feel if you feel your patent is valid then you should be able to survive an institution…

    Your clients are in for a stark reality check as long as the PTAB is around, if they have a commercially viable patent: WATCH OUT… infringers will just keep filing IPRs with the most outlandish string of reference stitching until something sticks.

    And something will eventually, when you can get an IPR institution with 10 references, the ability to create Frankenstein IPR petitions with the “right” pieces of publications, there is no escape.

    Make your claims double the size and the PTAB will accept 20 references.

  3. Anon September 27, 2017 10:35 am

    To “A Reader”‘s comment @ 1,

    The tactic you mention has been in my arsenal since the Claims and Continuation Rules fiasco (circa Tafas timeframe).

  4. Curious September 27, 2017 11:06 am

    Yawn … I hate to break it to you, but these tactics are hardly “revolutionary.”

    However, anybody who thinks they are still going to get broad claims and avoid the PTAB at the same time is engaged in wishful thinking.

    I recall a client once decided that they wanted earlier-issued claims so they instructed us to amend a substantial number of their applications to include all of the dependent claims in the independent claims — the result being extremely narrow claims. However, from what I recall, all except a single one was still rejected by the USPTO. The client subsequently changed their mind and we amended the claims to their original form — hence, broadening the language. I ended getting the vast majority of those applications allowed (with claims broader than the original claims that were rejected). The point is that Examiners are trained to reject applications no matter how narrow the claims initially are.

    I’m aware of certain examiners in certain art units that will not allow an application unless you win at the Board. Some people think that appealing necessarily means that you are going to the Board — this is not true. Something like over 50% of appeals never make it to the Board.

    The thing that many people overlook about going to the Board is that winning at the Board usually means broad claims and a boatload of patent term extension. That is a win-win for your client.

  5. Gene Quinn September 27, 2017 12:03 pm

    Curious-

    “these tactics are hardly revolutionary”

    I must admit I had the same initial reaction when I read the article myself and wondered about publishing the article. But what you and I and many others who are regulars here would no doubt characterize as not revolutionary is, in fact, sadly revolutionary based on the type of representation that seems to be engaged by many.

    Context is everything, and in an era with decreasing patent budgets and companies wanting patent practitioners to do more with less I think these types of tactics need to be discussed openly so clients get the message.

    -Gene

  6. Dan Hanson September 27, 2017 12:45 pm

    Whether this piece is really revolutionary or not, there are a couple of points that are significant, and have applicability beyond software-based inventions.
    1. Try to identify and deal with problems in the drafting stage. Solving a problem in the drafting stage is much easier than trying to fix things during prosecution.
    2. Do not always claim broadly. It may be in your client’s interest, for many reasons, not to claim as broadly as you think you can; and your client’s interests ought to be foremost.

  7. Gene Quinn September 27, 2017 3:08 pm

    I think claiming broadly, particularly with software, is a real problem and have been saying that for the past several years. We see what the Supreme Court does with broad software claims, and the Federal Circuit also. Broad software claims seem to do nothing more than contaminate the entire application.

    I’m not suggesting the patent application lack disclosure sufficient to make broad claims, but I do feel that broad claims need to be constrained to particular applications so they do not contaminate other applications/patents. Maybe someday the tide will turn back, but for now those broad claims really do more harm than good. Both from a 101 and a 112 perspective, and of course from a 103 perspective as well.

    I think what makes this advise revolutionary is how infrequent it seems to be followed and how common it still seems to be to go after broad claims at the expense of what could be protected.

  8. Curious September 27, 2017 4:11 pm

    is, in fact, sadly revolutionary based on the type of representation that seems to be engaged by many
    Sure — I complain about the Board and Examiners. However, there are plenty of patent practitioners who really don’t know what they are doing.

    Unlike the USPTO, that is capable of putting together a consistent training program for ALL of their Examiners, many patent practitioners merely learn from who taught them. In many instances, that may be in a small law firm where there are only 1 or 2 other patent practitioners. As such, if they are doing it wrong, odds are that the new person will learn the wrong way.

    Learning to be a good patent prosecutor takes a long time and you need good people training you. Also, it is a never-ending process.

  9. Ned Heller September 27, 2017 6:52 pm

    Curious and Gene, I agree with you both. The better practice is to include in an initial filing claims of all scope, but to focus on getting the narrowest claims allowed so that one does not have to file RCEs or to appeal. Thereafter, broadened claims can be pursued in a series of divisionals or continuations.

    But, keeping continuations pending is a must for any number of good reasons. The only reason to stop prosecution after the initial patent is if the client cannot afford better prosecution, or if the patent will never be enforced, but simply added to an already bloated pile.

  10. Night Writer September 27, 2017 7:33 pm

    Close to what we do. I think broad claims are fine for a first round. I do everything you do, except I write broad independent claims with lots of detail in the dependent claims. I haven’t had any problems getting these allowed.

    Plus, I think the patent is more valuable with a broad independent claim and lots of detail in the dependent claims.

    Plus, I am not sure that I am serving the client by writing claims that are narrower than needed for an allowance–certainly not if there are dependent claims to back it up.

  11. Night Writer September 27, 2017 7:58 pm

    Actually, the most important thing in writing applications is learning how to stay out of the business method art units. I think I’ve learned to do that.

    Also, another real trick is to learn to write in technical solutions for things that traditionally we don’t think of as a technical solution. Another one is an improvement to the hardware when it is software.

    Now, I’d like to see articles on those.

  12. Night Writer September 27, 2017 7:59 pm

    By the way, my law firm had internal CLEs on doing what they are talking about doing 3 years ago.

  13. Pro seco September 27, 2017 8:37 pm

    Seems like the authors says exactly what they mean by “revolutionary,” so let’s get off our high horses (pun intended): “We use the word “revolutionary” in part because this approach is radically different than the traditional approach of appealing as a matter of course after a patent application has been rejected multiple times, and also because this strategy mirrors that used by the American “irregulars” in the Revolutionary War against the British Army (with the historic sites of Lexington and Concord down the road from my old office, we’re constantly reminded of the strategy and tactics that the patriots deployed).”

    Irrespective of the title of the article, as an inventor who has worked with over a dozen law firms and many more attorneys over 30+ years, this approach not only makes perfect sense to me, but it’s also uncommon. Perhaps this isn’t the case with Gene’s readership, however the majority of practitioners aren’t nearly as strategic. IPRs or not, this approach makes a lot of sense.

  14. Jeff L. September 28, 2017 3:02 am

    Revolutionary or not, this was a valuable article on an approach that doesn’t seem very common at all and needs to be considered.

  15. Night Writer September 28, 2017 8:31 am

    @13 Jeff: Sure it is nice to talk about. It would just be nice if it were incorporated into the body of knowledge of writing applications and not sold as revolutionary.

  16. Gene Quinn September 28, 2017 11:12 am

    Pro seco-

    You say: “this approach not only makes perfect sense to me, but it’s also uncommon.”

    That is a truly sad commentary. I have to agree with you based on much of what I see. The people that I know who are doing high quality put a lot of time and effort into strategy on the front end and the back end work result shows.

    I do think those who are engaging in high end work for clients who really care and are willing to participate and invest in quality results sometimes have a very different sense of what really goes on by and large. The advice here is revolutionary – as you say – because it is uncommon. There is a confluence of events causing that (I think). Sometimes it is a client that doesn’t want to pay and is forcing attorneys to do try and do more with less time/money (as with large entities), and sometimes it is an attorney not wanting to tell a client the way it needs to be or that a particular application just needs to be given up because it is hopelessly compromised. Other times I think attorneys are so worried about KRS and obviousness that they are afraid to describe the invention, which today means you are going to have all kinds of 101 and 112 issues before you ever get to 103.

    Whatever the case, patent practice has changed dramatically over the last several years. Joe Root, author of Patent Drafting Rules, refers to this as the “Disclosure Revolution.” His articles are here:

    http://www.ipwatchdog.com/people/joseph-root/

  17. Paul Johnson September 28, 2017 11:34 am

    Gene, good comments. I’m curious how this strategy would work for American clients also wishing to patent in Canada, where continuations are not available.

  18. Night Writer September 28, 2017 3:02 pm

    @17: Continuations aren’t available? Well, you can not pay the fee and add a bunch of new claims. Pretty close to a continuation.

  19. Night Writer September 28, 2017 3:47 pm

    @16 Gene: I think that what has happened is that people are willing to spend less money on patents because they are worth less (what 20 percent of what they were worth 10 years ago?) Ironically, it has also become harder to protect inventions with all the judicial activism at the CAFC and Scotus. So we get it coming and going.

    I wouldn’t recommend prosecution to anyone coming up now. If IPRs aren’t declared unconstitutional, I think we can expect it to keep getting worse and worse.

  20. Gene Quinn September 28, 2017 5:27 pm

    Night-

    My recollection is that the squeeze started happening well before IPRs. There has always been a squeeze on patent practitioners to do more for less, which got much worse after 2008. There is no doubt that from the clients perspective it could be argued this is rational now because patents are worth less, but it seems foolish to me. If you want to spend less you’d be far better off seeking fewer patents.

    Why contaminate every patent with insufficient disclosure/strategy? Put your resources into stronger patents that can actually stand the test of time. I’m surprised more aren’t doing that (to some extent). The clients that are (or will) are those that will win the future.

    As for the future… something has to give. The US patent system is at a breaking point.

  21. Night Writer September 28, 2017 6:20 pm

    @20 >>Put your resources into stronger patents that can actually stand the test of time

    I generally agree with everything you said. But, I think a lot of CAFC cases have nothing to do with quality or law, but with judges deciding a NPE is not going to keep their patent. And, with IPRs, I think it is very, very difficult to keep your claims.

    One thing is that I am pretty convinced that what you said is going to happen in the next downturn. The VPs are going to say, let’s drop 30 percent off the prosecution budget and file fewer patents, but pick them better and write them with a higher quality.

    The other thing that people don’t talk about is maintenance fees. The budget for corporate prosecution includes the maintenance fees, so as they go up it puts more pressure on the prosecution work.

  22. Night Writer September 28, 2017 6:26 pm

    Gene @20 As for the future… something has to give. The US patent system is at a breaking point.

    I think just from talking to people that we are at a tipping point. We are close to corporations cutting a huge chunk of their patent prosecution.

    The other thing is that they know they can steal anything, so the research budgets are going to drop too. (Fear not Google will provide.)

  23. Night Writer September 28, 2017 6:28 pm

    One thing is the new Next doorbell. Now, this is interesting. There are other products that came out a year or two before the Next is going to come out. Now, what is happening is the big corporations just let others develop a product (both the market and the tech), and then they come out with a product and kill off the competition. With IP that can be hard to impossible and you have to buy the other company. Without IP you just copy them.

    That is reality.

  24. Curious September 28, 2017 7:51 pm

    From the article:
    We use the word “revolutionary” in part because this approach is radically different than the traditional approach of appealing as a matter of course after a patent application has been rejected multiple times

    @12 writes:
    Irrespective of the title of the article, as an inventor who has worked with over a dozen law firms and many more attorneys over 30+ years, this approach not only makes perfect sense to me, but it’s also uncommon.
    The approach described in the article is uncommon? What is uncommon is appealing. By last count, about 300K utility patents are issued by the USPTO in a year. Looking at the latest statistics, only about 12K appeals will be filed this year — that’s only 4%.

    Appealing rejections, are BY FAR, much more uncommon that engaging in “normal” prosecution.

    I cannot tell you how many times I have picked up prosecution (from another firm) and seen good arguments abandoned because the attorney wouldn’t push the issue with the Examiner. Unless appealing bad rejections is part of your tool bag, you are very likely NOT getting your clients the broadest claim scope based upon the prior art.

  25. Anon September 29, 2017 8:45 am

    Curious,

    A caveat (as I do share your view that the route of appeal is under-used):

    It is the client that decides whether or not to go down the appeal path – NOT the attorneys. I know of NO attorneys that like to see “arguments abandoned” and it is NOT (typically) the attorney who is unwilling to push the issue with the Examiner.

    It galls me to acquiesce to bad rejections, but I have done so on a number of occasions at the direction of the client.

  26. Night Writer September 29, 2017 9:14 am

    @25 I agree. I had one client that let me appeal often and that was wonderful. I had an 80% win/lose percentage.

    One thing that actually is not being said here is that narrow claims are easy to prosecute. One can often come up with narrowing amendments fairly easily. The hard part is getting claims that are patentable over the cited art with no more claim scope than needed.

    Another thing about this is that continuations go to the same examiner. I have often gotten claims allowed that are broad (just as broad as can be over the cited art) and then the continuation is easy. The examiner allows first action. That is probably the better route in my opinion. When I have tried to get broader claims, then usually the examiner puts up a fight.

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