This is the first of a 5-part series of practical guidance on how to avoid or overcome statutory subject matter rejections under Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). The focus will be on business methods, but the guidance should be applicable to all technology fields. This first article discusses how to effectively counsel a client in the early stages of patent preparation so that the client will provide adequate technical content in their invention disclosure. With adequate technical content, the patent practitioner can, as discussed in the second article, craft a patent application that is much more likely to be classified in an Alice-friendly art unit (e.g. technical), as opposed to an Alice-unfriendly art unit (e.g. business method). The remaining three articles further discuss actions that can be taken during prosecution or appeal to further increase the chances of allowance.
With every passing Section 101 case, the Federal Circuit continues to refine the standard for patent eligibility for computer-implemented inventions. As it does so, patent law pundits write articles that extract Federal Circuit clues for drafting patent applications to comply with Section 101. Even though judicial exceptions to patent-eligible subject matter have been around for a long time, the disparity among different technology classes has become pronounced. In fact, some computer related art units at the USPTO, such as those associated with business method technology, issue Alice-based rejections at a much higher rate than other art units. Rather than spend a significant amount of time and money on patent prosecution in such difficult art units, we describe another way to avoid the Alice battle altogether: include substantive technical content in your patent application so that, for purposes of examination, it is steered to an optimal, more Alice-friendly, art unit.
Including the right technical content in a patent application for an optimal art unit begins with the first contact between a patent practitioner and a client. Initially, the client will communicate, either orally or in writing, a disclosure of his or her invention. Assuming the disclosure is directed toward a business-related computer-implemented invention, the practitioner should, in view of case law, identify the following “adequate technical content”:
- technical aspects of the invention,
- the technical problem solved by the invention,
- any technical improvements and/or perceived innovation, and/or
- the critical computer functionality provided by the invention.
If the invention disclosure has adequate technical content, then the practitioner is well positioned to begin drafting the patent application. The technical content will be the foundation of the application, while the business content will be presented as an exemplary application of the technology as a whole. Ideally, the inventor will also describe other non-business applications. If a client, for example, develops an improved rules-based fuzzy logic process that enables an improved accounting process, the client should be encouraged to think of other more physical, technically based applications of the improved rules-based fuzzy logic process. The more physical applications are then described in the patent application as alternative embodiments.
Not all invention disclosures of business-related inventions, however, have adequate technical content. This is especially true when the primary inventor is not a technologist. In such cases, the practitioner can educate the client about the de facto technical requirements. Be blunt: without adequate technical content, there is no realistic chance of allowance. Straight talk about the reality of Alice will eventually be appreciated to even the most skeptical of clients.
Often times, inventions include, or at least suggest, technical aspects that are not immediately apparent from the face of the disclosure. There are concrete ways that the practitioner can bring out these seemingly latent technical aspects. For example, the savvy practitioner can encourage the client to articulate how the invention improves computer capability. This can help bolster the technical aspects of the invention and avoid the invention being characterized as being directed toward an abstract idea. See e.g., Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (citing Alice) (Fed. Cir. 2016); Cf, TLI Communications LLC Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016).
Next, the practitioner should make the client aware of the importance of corresponding the technical improvements with points (b) – (d) above and should seek to include such information in the application. Take, for instance, point (b), the technical problem solved by the invention. This is important because inventions including a technical solution to a technical problem are more likely to be viewed as including an “inventive concept.” See e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259, (Fed. Cir. 2014).
One way to ensure adequate technical content is to become very familiar with the details of the invention. If possible, it is helpful to request a disclosure resembling a reduction to practice, such as a technical specification or prototype. Development of the technical specification or prototype may require the assistance of a third-party developer. When using a third-party developer, however, the practitioner should advise the client of the necessity of executing formal assignment documents first. If the developer provides the technical solution to the technical problem, then the developer may become a co-inventor, depending on the extent to which the developer contributes to the claimed invention.
The following hypothetical example elaborates on an invention with a non-technical use that fails to identify all of the above-mentioned items (a) – (d):
A client discloses a rules-based application (implemented in software) having particular use in the area of accounting. Among other things, the application includes a spreadsheet for inputting data in a selected manner. Responsive to the selected data input, the application allows for the projection of all sorts of phenomenal and unexpected accounting results. The disclosure only states that “fuzzy logic is used to drive the rules-based application.” No more technical detail is given.
In accordance with the above discussion, particularly point (a), the client should be apprised of the necessity of fully fleshing out the inventive aspects of the technical implementation (i.e. the fuzzy logic). The client, however, may not know what the technical implementation is or what technical problems may need to be overcome. At this point, there may be no harm in filing a provisional patent application to capture the earliest priority date for the client.
The next step under point (b) is to work with the client to develop a plan for implementation. Actual technical implementation can be expensive, but it is a very effective way to reveal technical problems that have to be solved. Technical implementation always (in our humble experience) reveals unforeseen technical problems. Readily available solutions may not exist. At some point, what is readily available may need to be modified or customized to serve the specific needs of the new business application, particularly as that application is scaled up. This is where patentable innovation occurs. These customized solutions become the technical solutions to technical problems that are ultimately the foundation of the patent application.
Next in point (c), take a close look at the technical improvements and/or perceived innovation. In this case, had previous accounting systems not incorporated fuzzy logic for a specific reason? Did specific technological obstacles in a particular field make this technical implementation unrealistic or very difficult? Answers to these questions can provide technical content to include.
Here, the client may be concerned that disclosure of a particular solution to a particular problem may reveal information the client would prefer to keep confidential. This is an excellent opening for the practitioner to have a candid conversation with the client about the fundamental quid pro quo of the patent system. The government provides monopoly rights to inventors specifically to encourage disclosure of inventions that inventors would otherwise wish to keep secret. If a client is reluctant to disclose a technical solution to a technical problem, that’s a good clue that the technical solution is indeed patentable. If the client does not trust the patent system to protect the disclosure, then that will open a door for a productive conversation about the virtues of trade secret protection. A conscientious practitioner should be focused on assisting the client in selecting the most appropriate form of intellectual property protection consistent with the client’s needs. There are times, particularly in this environment of 101 uncertainty, when maintaining a trade secret is a more effective option than seeking patent protection. And, under the American Invents Act (AIA), maintaining an invention as a trade secret does not necessarily preclude seeking patent protection at a future time.
Next, in (d), the practitioner can help to identify critical computer functionality. Often times, an invention that relies on an implementation that is rooted in computer technology is a countermeasure against an abstract idea assertion. This is often times true if the claimed invention cannot possibly be implemented by mental processes or by pen and paper alone.
The client may be concerned about unduly limiting the coverage of the patent to a particular technical implementation. At this point, the practitioner may want to encourage the client to simply write down all of the conceivable alternative ways the technical problem can be solved. These alternative ways are incorporated into the patent application and reflected in the breadth of the independent claim. If the client is still concerned about another party coming up with an unforeseen way to get around the technical problem, then another candid conversation about an essential purpose of the patent system may be in order. The government provides patent rights to inventors because it wants to encourage others to find new solutions to technical problems. The original inventor only gets patent rights to what the original inventor invented, not to what others might invent in the future. It was the apparent failure of the patent system to achieve this objective by issuing patents on overly broad abstract ideas that ultimately led to the Alice decision in the first place.
In conclusion, adequate technical disclosure is essential to drafting a patent application that is likely to be classified into an Alice-friendly technical art unit. Make sure to carefully work with the client to gather all the necessary technical information.
TO BE CONTINUED… In our next article, we will provide practical guidance on how to structure and draft a patent application so that it has a high likelihood of being classified exactly in the art unit the client intended.