Changes in Patent Language to Ensure Eligibility Under Alice

By Peter Glaser & William Gvoth
December 6, 2017

The Mad Hatter, known for asking the most famous unanswerable riddle.

The Mad Hatter, known for asking the most famous unanswerable riddle.

When a rule becomes a target, it ceases to be a good rule.  In the three years since the Supreme Court issued its opinion in Alice, there have been positive changes to patent applications, but there remains a long-term risk that patent practitioners will use tricks to beat the Alice test.  Here, we focus on the changes to patent applications by drafters, as well as changes to patent applications that have issued since Alice.

In Alice v. CLS Bank, the Supreme Court laid down a straightforward, if difficult to consistently apply, test for patent eligibility under 35 U.S.C. § 101.  Patent eligibility is to be determined based on 1) whether the claims at issue are directed to a patent-ineligible concept; and 2) if so, whether the claim’s elements, considered both individually and as an ordered combination, transform the nature of the claims into a patent-eligible invention.  This test is intended to be used to determine if a claimed invention is abstract, and thus patent ineligible under § 101.  We conclude that, in the short term, this test has resulted in positive changes to patent applications, as drafted.  However, strategies by patent practitioners to circumvent this test may limit the test’s effectiveness in the future

Since Alice, there has been a sharp drop in allowance rates for patent applications classified into the business method technology center.  Different strategies for patent preparation and prosecution in a post-Alice world have emerged.  For example, commenters have proposed increasing the level of detail with which an invention is described in a patent application and including more detail in the claims.  Our analysis focuses on patent applications that issued as patents from 2010-2017 to determine whether there have been any noticeable changes in patent language that may be attributed to post-Alice efforts to ensure eligibility under the Alice test.

In Figure 1, we looked at the average word count for the first independent claim in applications by issue year.  Between 2010 and 2014, we found that the average word count in the first independent claim remained fairly consistent.  For example, the difference between the highest average word count—in 2010, 257 words—and the lowest average word count—in 2013, 242 words—was a decrease of approximately 6%.  Overall, the average word count in the first independent claim decreased from 257 words in 2010 to 247 words in 2014, representing a net decrease of approximately 4%.  However, thereafter we saw increases of approximately 8.5% between 2015 and 2016 and 16% between 2016 and 2017 in the average word count for the first independent claim.  Prior research has argued that an increase in the word count of the first independent claim corresponds to a narrowing of patent scope.  Consequently, if the public policy goal undergirding the Alice decision was a “rebuke to… overbroad, poor-quality software patents,” we can conclude that the Alice decision has been successful, despite the aforementioned difficulties in its application.

Patent practitioners are not merely repeating the same words to increase the word count, they are adding significant quantities of unique words.  In Figure 2, we looked at the average word count in the first independent claim of issued patents by unique word count.  In other words, a repeated word would only count a single time in our analysis.  We found that between 2010 and 2014, the average number of unique words in the first independent claim remained relatively stable between 73 and 71 words.  Again, we saw an increase of approximately 19% in 2017 relative to the 2010 to 2014 baseline.  Given the increase in the number of unique words, rather than merely repeating words in the first independent claim, we may conclude that patent practitioners are attempting to include additional detail in the claims, rather than simply repeating words to satisfy the pencil test.

The results for the average number of unique words in the first independent claim correlate to the results for the average word count in the first independent claim (described with respect to Figure 1).  For the years from 2010 to 2014, the average number of unique words in the first independent claim decreased by approximately 3% (compared to approximately 4% for the average number of words in the first independent claim).  In addition, for the years from 2015 to 2017 the average number of unique words in the first independent claim increased by approximately 15% (compared to a 19% increase for the years from 2015 to 2017 for the average number of words in the first independent claim).

We can also see patent practitioners attempting to include additional details in the specifications of patent applications, though the evidence for this is less clear.  Previous analyses have reported that patent specification length has been increasing since long before 2010.  As shown in Figure 3, from 2010 to 2013, the average patent application length was approximately 12,417 words.  However, from 2015 and 2017, the average patent application length increased to over 14,700 words.  Even though the average number of words in patent specifications has been increasing since 2010, the rates of increase are different for the years 2010 to 2014 (the year of Alice) and for the years 2015 to 2017 (the years following Alice).  For the years 2010 to 2014, the rate of increase was approximately 242 words per year, or approximately 2% per year (with a decrease in average word count from 2012 to 2013).  For the years 2015 to 2017, the rate of increase was approximately 504 words per year, or approximately 11% per year (with a decrease in average word count between 2014 and 2015).  This may be a result of successful patents including increased numbers of benefit statements in patent specifications, thereby enabling patent practitioners to argue that the claims are directed to a technical solution to a technical problem.  Alternatively, this may be a result of issued patents including additional disclosure details, additional fallback positions for prosecution, or additional implementation alternatives.

Another proposed strategy for ensuring eligibility under the Alice test is to avoid classification into technology center 3600 and/or class 705.  A patent drafter may emphasize technical aspects of an invention in the first independent claim, abstract, and title to ensure classification into a favorable art unit.  It has been noted that “substantially fewer recent filings [were] classified in the business method class (class 705) as compared to the time periods pre-dating the Alice decision.”  An example of using this strategy may be to include words, such as “Artificial Intelligence” “Data Structures” “Digital Processing” and the like, in patent titles, abstracts, or first independent claims.  This could increase a likelihood of classification into classes other than class 705.  Such an increase, if the result of attempts to avoid classification into a more difficult art unit, undermines the utility of the Alice decision by increasing a likelihood that a patent drafter obfuscates the true purpose of an invention in the patent.

Preliminary data does show an increase in use of, for example, the term “artificial intelligence,” in patent titles, abstracts, and first independent claims; however, the sample size of applications filed post-Alice that include the term “artificial intelligence” is relatively small.  Future investigation is warranted as more applications are published.

The aforementioned findings suggest both a positive outcome to establishment of the Alice test as well as a potential pitfall.  Alice appears to have resulted in positive developments, such as narrowing the scope of claims and increasing disclosure of technical benefits of inventions in the specification.  However, as patent practitioners become increasingly savvy with regard to avoiding eligibility challenges, there remains the potential for meaningless expansion to replace meaningful claim limitation, and for obfuscation to be used to avoid further public disclosure.

 

Author’s Note: This article would not have been possible without the assistance of Rocky Berndsen and Jaclyn Jones.

The Author

Peter Glaser

Peter Glaser is an Associate with Harrity & Harrity, specializing in patent preparation and prosecution before the United States Patent and Trademark Office. He has represented various clients in a wide range of technical fields, including wireless communication systems, computer networking, computer hardware and software systems, telematics, mobile phones, virtual reality displays, cloud computing, e-commerce, and business methods.

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

Peter Glaser

William Gvoth is a patent attorney with Harrity & Harrity specializing in patent preparation and prosecution before the United States Patent and Trademark Office. He has represented various clients in a wide range of technical fields, including telecommunications, computer networking, computer hardware and software systems, internet-related systems, and business methods. William is a graduate of William and Mary Law School, where he was a notes editor for the William and Mary Bill of Rights Journal. He attended Virginia Tech where his studies and industry experience focused on designing and implementing software and computer-based systems.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 27 Comments comments. Join the discussion.

  1. Night Writer December 6, 2017 8:01 am

    This is exactly what is happening. And it has become Voodoo. Different people put in different stuff and the examiners want different stuff to allow the claims. The whole thing is absurd–frankly it is degrading to be a patent attorney and have to twist and turn to dodge Alice.

  2. Bob Weber December 6, 2017 8:26 am

    The unanswered riddle is: “Why is a raven like a writing desk.” https://en.wikipedia.org/wiki/Hatter_(Alice%27s_Adventures_in_Wonderland)#The_Hatter.27s_riddle

  3. Josh Slavitt December 6, 2017 9:06 am

    Without a more detailed analysis, I think it is difficult to use word count — even unique word count — as a reliable indicator of claim scope. Having prosecuted patents for over 20 years, I am well aware of the tendency to offer lengthy claim amendments with the least possible substantive change in scope. Such amendments are more effective in creating the impression that claim scope has been narrowed (as compared to mere repetitions of existing claim language). Thus, a skilled prosecutor would be motivated to increase the unique word count of the claims with the least possible impact on scope.

    In view of this, increased average unique word count may be indicative of narrower claim scope, but it may also suggest more widespread and effective employment of this type of prosecution strategy.

  4. Anon December 6, 2017 9:42 am

    I am troubled by this article.

    Not so much in that the article attempts to paint the Alice decision in neutral or even favorable colors (when it was a horrendous decision) – well, at least not only that.

    The article also adds to the misperception that “scriviners” are attempting to obfuscate and “get around” the law.

    The article seemingly does not recognize the very real presence (and source) of patent profanity, and instead seems to add to castigating attorneys who seek (merely) protections for inventions that the law – as written by Congress – permits.

    From the firm bios, it appears that BOTH Mr. Glaser and Mr. Gvoth went right from engineering undergrads into law schools, While Mr. Gvoth’s bio includes the term “industry experience,” I am left wondering how much experience there may be – and how much that experience fares against the rather recent “indoctrination” of law school anti-patentism that appears to flavor the perspective of these two authors.

    When I weigh the rest of the “boilerplate” so often found in attorney bios against the words and tone of the article, I am left rather unimpressed by the views being expressed here.

  5. Ternary December 6, 2017 11:51 am

    This article reads like bureaucrats deliberately supporting complicating the process of obtaining a patent, in order to protect viability of their own bureaucratic skills. Do you guys really count words in a draft claim? This is how our patent system is becoming more byzantine and heading for irrelevancy. It is one thing to state that it is easier to obtain claims with a narrow scope. However, praising limited scope claims as a benefit of a patent system (Alice) is against the interests of inventors which the authors are supposed to represent.

  6. Mark Nowotarski December 6, 2017 3:16 pm

    That’s an interesting point about “It has been noted that “substantially fewer recent filings [were] classified in the business method class (class 705) as compared to the time periods pre-dating the Alice decision.””. I’ve seen that in the data as well.

    What I haven’t seen, however, is a shift to other technology art units. Several major banks, for example have just about stopped filing in technology center 3600 (business methods), but I have not seen a corresponding increase in the filings from these banks in the computer technology art units (e.g. technology center 2100). That tells me the banks are not restructuring applications to get in a desired art unit, they are simply not filing applications on inventions that would be classified as business methods.

    Has anyone actually seen a shift in the data?

  7. Night Writer December 6, 2017 4:01 pm

    @6 Mark–

    We do everything we can to make sure we don’t end up in 3600. There is a definite shift where our applications don’t get classified in 3600 as often. There is some pruning of applications, but they are made up with other applications.

    Personally, since Alice I have not had an application go to 3600. (One could argue that it is best practices to do everything possible to stay out of 3600.)

  8. Curious December 6, 2017 10:51 pm

    One could argue that it is best practices to do everything possible to stay out of 3600
    One need not argue. Staying out of 3600 should be an important goal of any patent practitioner. It boggles my mind when people still write things like “business” and “advertising” and “marketing” and other such words in claims that would tend to cause an invention to be classified in 3600..

    Tech Center 3600, by far, is the worse tech center at the the USPTO. The examiners misrepresent the law, they misrepresent the facts, and they literally make up rejections. This has been going on for more than a decade. It would be far easier to fire them all and bring in a fresh set of examiners than try to fix the institutionalized blatant disregard of the law prevalent in 3600.

  9. Mark Nowotarski December 7, 2017 10:16 am

    It boggles my mind when people still write things like “business” and “advertising” and “marketing” and other such words in claims that would tend to cause an invention to be classified in 3600.

    Curious@8 It’s entirely possible that most practitioners are still not aware of the hazards they face. I was chatting with the chief patent counsel of a major credit card company not that long ago and he was quite confident that their outside counsel knew how to draft applications to stay out of 3600. But when I checked their filings on Patent Advisor, their applications were still being classified as business methods. If inside counsel is not tracking the art units their cases are classified in, they won’t be aware of the problem.

    I think it would behoove every practitioner filing a computer implemented invention to check their filing receipts when they come in. If the Group Art Unit in the header begins with “362”, “368” or “369” (i.e. the business method work groups) they should discuss with their clients the advisability of redrafting and refiling the case to get into a more conventional computer technology art unit.

  10. Anon December 7, 2017 11:24 am

    Along the lines of the comments here (and very much taking my own comment in mind), I believe that an article of immense worth would be one in which methods of staying out of known “dead zones” within the USPTO would be detailed.

  11. angry dude December 7, 2017 5:43 pm

    what about patents duly and properly issued before Alice ???

    Huh ???

    what a farce

  12. angry dude December 7, 2017 5:47 pm

    so you clowns (patent lawyers and such) continue to write nonsense and collect
    (now hopefully reduced) retainers while the whole edifice is burning down ?
    why don’t you go on strike for f^** sake ???
    I am angry as hell
    and you will not get a dime from me anymore

  13. Mark Nowotarski December 8, 2017 6:46 am

    Anon@10

    I’ve contemplating writing just such an article. If you want to discuss in more detail, feel free to contact me mark.nowotarski@gmail.com

  14. Curious December 8, 2017 8:58 am

    so you clowns (patent lawyers and such) continue to write nonsense and collect
    (now hopefully reduced) retainers while the whole edifice is burning down ?

    I am beginning to wonder why Gene hasn’t banned you yet. You’ve impugned the reputation of the people posting on this blog so many times that even I have grown wearisome of it. The vast majority of the people on this site are for a STRONG patent system, yet you continue to write comments like this.

    You are NOT helping the cause. If you want to lash out at a system that has wronged you, I wish Gene would permanently send you on your way to an alternative forum to do so.

  15. angry dude December 8, 2017 9:53 am

    Curious @14

    Dude, I speak hard truth and your reputation means nothing to me

    Gene banned me once years ago for my dire predictions about the future of US Patent system

    Guess what ?

    We are living in that future now:
    most of my predictions came true or will take effect in the very near future
    (and that includes reduced retainers or no retainers for you, patent lawyers)

  16. Curious December 8, 2017 9:19 pm

    Dude, I speak hard truth and your reputation means nothing to me
    Hard truth? All I read from you is whining, whining, and more whining? If you are done with the patent system, then walk away. Why do you keep immersing yourself in it? Honestly, I see no value in what you post.

    and that includes reduced retainers or no retainers for you, patent lawyers
    You forget that while the patent system has been reduced to the sport of kings, many of us work for those same kings. While I advocate for the individual inventor and small business owner on this blog, I am paid by the kings … and they aren’t going anywhere.

  17. 101nDone December 9, 2017 4:11 am

    As to the statement: Consequently, if the public policy goal undergirding the Alice decision was a “rebuke to… overbroad, poor-quality software patents,” we can conclude that the Alice decision has been successful, despite the aforementioned difficulties in its application.

    Think about it, how can “quality” increase when most examiners have near zero legal training/experience in assessing what is a “judicial exception”? And, training on 101 is time not spent on 102/103 (only 24 hours in a day). The goal was chaos, to devalue patent rights and destroy goodwill between applicants and examiners that was built over decades. For someone to argue that “quality” has increased, that’s impossible! In a stable system, word count may have meaning, in an unstable system, it’s a sign of instability – more accurately, a sign of an examiner’s fear of being cited for error by a TQAS. A TQAS is not supposed to have “authority” on 101 rejections, yet they do, it’s called the exercise of error power over examiners. And, TQASs are pretty much inaccessible to applicants. The current system, as intended, delivers chaos, devalues patent rights and irritates anyone that is not an illegal monopoly (that turns the revolving door at the FTC/DOJ/USPTO).

  18. 101nDone December 9, 2017 4:38 am

    As to the statement: Alternatively, this may be a result of issued patents including additional disclosure details, additional fallback positions for prosecution, or additional implementation alternatives.

    Isn’t that simply another sign of chaos? The powers that be know they can turn the system on its head. The USPTO is becoming more like the EPA, deniers of scientific fact. Why? Because with 101, scientific facts no longer matter.

    There’s an article by Howard R. Popper, a patent attorney for Bell Laboratories, which appeared in The American University Law Review (Howard R. Popper, Prater II, 19 Amer. Univ. L. Rev. 25 (1970)). Popper quotes the late Primary Examiner Mr. Smilow:
    The need for a more summary treatment of software (program) claims arose with the advent of the computer, since rejection for lack of nvelty [sic] became entirely too involved . . . non-statutory holding was concluded to be an applicable basis for summary, no-examination treatment (along the lines of methods of doing business, printed matter, mathematics, etc.) . . . There was always a lack of capacity (personnel shortage, lack of training, lack of prior art files) to perform the conscientious, meaningful examination.. . .

    We are seeing a throwback to the 1960s where a “non-statutory holding was concluded to be an applicable basis for summary, no-examination treatment”. And, “lack of capacity” is where some like to see the USPTO – just see the US Chamber rankings.

    “Quality” is a lot like “patent troll”, sounds good, but nobody dares define.

  19. angry dude December 9, 2017 1:54 pm

    Curious@16

    Dude, I already walked away from US patent system years ago (after litigation which didn’t bring any money yet somehow ruined SV IPO)
    But technically I am still the owner of one valid and widely infringed tech patent
    (for which 3rd maintenance fee is due right now btw)

    “I am paid by the kings”
    Ha-Ha-ha
    You are an IP lawyer
    Do you really think you can kill the cow and still milk it ???
    Me thinks you might end up working for some Indian tribe very soon 🙂
    Get your feathers ready, dude

    P.S. This is nothing personal, Sorry. But reading some articles and comments on this (pro-patent) blog makes me so upset that I have to vent out somewhere and there is no other place to go…
    my wife by now knows for sure that anything patent-related is a sure way to lose money and people I drink with after work don’t know what US Patent is…

  20. Curious December 9, 2017 9:40 pm

    Do you really think you can kill the cow and still milk it ???
    I’m not looking to kill the cow — never have been — neither have been the vast majority of people who post here. Try to paint with a narrower brush.

    IPRs don’t really impact the big players. Sure, you can put a patent or a dozen in IPR. However, you cannot do that with 1,000 or 10,000 patents. Once the number gets to be big enough, as a defendant, you could spend hundreds of millions of dollars invalidating 90% of them, but still be facing hundreds of valid and infringed patents. When you have those kinds of numbers, you don’t need an Indian tribe.

    I have to vent out somewhere and there is no other place to go
    I have no problems with constructive comments — even those I disagree with. However, I have no ear for plaintive wailing and whining. It doesn’t help the cause.

  21. Anon December 10, 2017 9:59 am

    Curious at 18: I agree fully with your post.

    I “get” the anger and emotion from “angry dude,” but as I have noted directly to him previously, his focus on anger intrudes on his use of reason, and he ends up proselytizing with the very message that the Efficient Infringers want to impress on the american public: stay away from patents, as these are the domain of the Game of Kings.

    Many that he would so blatantly tar with his overbroad brush are actively seeking to restore a strong patent system so that competition based on innovation is not quashed in favor of the more traditional non-innovative competition factors that established entities enjoy.

    His type of venting – as you note – is not helpful.
    In fact, I posit that it is harmful, and if followed, guarantees victory for those that he is truly angry at.

  22. Anon December 10, 2017 10:14 am

    Posted in error on a newer thread, the following comment belongs here:

    I would also note that tarring with a “too broad” brush was pushed back at post 27 of the following link:

    http://www.ipwatchdog.com/2017/11/28/predicting-oil-states-supreme-court-oral-arguments/

    Therein several facets of what it means to be an attorney (and when or whether any such denigration such as “mouthpiece” may be applicable – and provided, perhaps, a sharper focus of where criticism should be directed to).

  23. angry dude December 10, 2017 6:05 pm

    Anon @19

    You guys still don’t get it ??

    It’s not me but YOU, US patent attorneys, who MUST be telling American public:
    STAY AWAY FROM US PATENT SYSTEM

    If some dude comes to you with an invention and you know he can keep it a trade secret for a while then YOU MUST tell that guy :

    DO NOT file for US patent protection. Period.

    It is your duty as an attorney to tell that, heck, not just tell – put it in writing and have your prospective client sign underneath, unless you want to be sued for malpractice years later

    I’m becoming convinced that lawyers in this country have no shame, regardless on which side they are.. good or bad … who cares anyway… they switch sides all the time

  24. Anon December 10, 2017 9:54 pm

    I am sure that you intended the “You guys still don’t get it ?? to be rhetorical, but since you have not bothered to read the admonitions to you, it is YOU that “still don’t get it.”

    Less emotion – more critical thinking. The path you present is the very path that the Efficient Infringers WANT you to present.

    Try to control yourself and not be a lapdog please.

  25. angry dude December 10, 2017 10:07 pm

    Anon@22

    It’s not my job to fight for saving US patent system and subsidizing it (efficient infringers too) by filing and maintaining more patents on products of my creativity

    It is your job to fight for the integrity of your own profession and for the future of intellectual property and innovation in this country

    I’m fine with trade secrets

  26. Anon December 11, 2017 6:44 am

    It is NOT my job to fight for the integrity of the profession as you would put it.

    My job is my personal integrity – of which YOU impugn when you go off the rails and rant from your emotional and non-critical thinking mantra.

    Try reading and understanding the replies to you on this topic.

  27. Curious December 11, 2017 3:13 pm

    It is your job to fight for the integrity of your own profession and for the future of intellectual property and innovation in this country
    Do you read anything of what is written on this blog? This blog is the biggest supporter of U.S. inventors of any blog I know of. This is where we, as patent attorneys, get to express our opinions.

    That being said, none of us have the financial backing and clout that the efficient infringers have. If Google et al wants to make a point, they’ll call any one of dozens of reporters (from the NY Times, Wired, Ars Technica, Washington Post to name a few) that would do anything to be on their good side.

    Also, between a patent attorney and an inventor, an inventor will always be the better advocate. The public, as a whole, love inventors and the idea of inventions. Attorneys, however, get bad raps because of ambulance chasers et al.

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