Most software patent applications, during examination, will receive an initial 35 U.S.C. § 101 abstract rejection based on Alice. Depending on which art unit the application is assigned to, overcoming the rejection can be easy or can quickly become a nightmare.
Software applications that are classified as “business methods,” that is, a way to implement a business idea using technology (like advertisements, financial services, hotel reservation systems, etc.) generally get assigned to a group unit between 3622-3628 or 3681-3693. Every well known technology company, including Facebook, Google, Microsoft, Adobe, and Microsoft have applications pending in one of these art units.
However, unfortunately, these departments are notorious for maintaining Alice based abstract rejections and not allowing a patent to be granted. It seems like the unofficial policy of the above mentioned art units is to persist Alice based rejections until the applicant gives up all hope and abandons the patent application.
Let’s take art unit 3622 as an example with matters examined between the time period of January 1, 2015 and
February 25, 2018 (the day of writing this post). According to publicly available USPTO data, this art unit has examined 2,661 applications in the last 3+ years. Out of these only 96 (there is no typo!) have been awarded a patent. That’s a mere 3.6% success rate!! While this is statistical data from only one art unit, all the above mentioned art units have similar patent grant rates.
Below is a list of a few sampled departments along with their success rates:
|Results For Applications Examined Between Jan. 1, 2015 and Feb. 25, 2018|
|Art Unit||Applications Examined*||Patents Granted*||Success Rate|
*Methodology used for calculations:
With such low success rates, how can one obtain a patent from these group units?
A careful study of the applications that were awarded a patent in the above mentioned art units yields that each patent had some form of technical information related to the implementation of the invention.
Therefore, to avoid getting stuck in an Alice based black hole induced by one of the above departments, technical details in a software patent application disclosure are important; with such details it may be possible to draft an application that highlights a technical advantage even when a business advantage of using the technology is desired.
Thus, while one may not be able to avoid the above mentioned art units (based on technology) the best option available to a patent attorney is to be proactive and draft the software patent application in such a manner that the invention highlights a technical aspect implementing the invention instead of a business advantage created by the use of technology.
The results above indicate that procuring a software based business method patent requires careful planning and a firm grasp of the underlying technology — by your patent attorney — at the initial stages of drafting an application (which unfortunately doesn’t seem to be the case for most applications in the above listed departments). Furthermore, a well drafted patent application will also reduce your total costs in getting a patent awarded, instead of going through years and years of fruitless rejections (that may ultimately result in failure with no patent rights secured).
An analysis and example why software patent applications for mobile apps land up in the 36xx departments and fail. More on this in our how to patent mobile apps post.
Recently I was asked by a family friend whether his 13 year old son’s idea was patentable. He took great pride in discussing his son’s idea, but he was dumbfounded when I asked him whether he’ll be able to provide a specific implementation of the software.
It’s a common misconception that one can patent an idea. While a patent might initiate from an idea, ideas themselves are not patentable. Patentable subject matter can be divided into four categories: (i) a process; (ii) a machine; (iii) a manufacturing resulting in something new; and (iv) a new composition of matter.
While it is true that software inventions can be patented as a process or method, the process or method needs to be described. Simply having an idea to implement a process on a computer would fun afoul with the Alice requirements and that would basically mean the death of the idea.
When I informed the above to the family friend, he exclaimed —
“but it’s my son’s idea.
So what could I do if someone else implements it?
It’s still his idea, isn’t it?“
Well, sure the idea might be of his 13 year old son, but since ideas are not patentable by themselves, the person who develops the process is the one who deserves to own the patent.
While this might not seem fair to the family friend, since a patent gives it’s owner a monopoly, there is also an ethical consideration to keep in mind when it comes to software patents. Consider a software startup that invested on hiring software developers do to research and development to solve a real world problem. If the startup comes up with a unique process to solve a problem, arguably, the startup deserves a patent on their implementation.
Now let’s presume the “solution” found by the startup solves the problem which was identified by a 13 year old. However, if the 13 year old is allowed to patent his idea and create a monopoly, then the startup would land up paying royalties to the 13 year old when they did all the research and development to provide an implementation to solve the problem. And since the startup does not have, at least initially, to pay royalties, such a scheme would inhibit innovation and potentially job creating positions — since the startup would have to close shop rather than deal with hundreds of thousands of dollars in legal fee if they 13 year old decides to sue the company.
Moral of the story: ideas by themselves will not give one the right to file a patent. It is thus important to provide something significantly more than just an idea, which usually includes an implementation of the idea. Patents should be considered as a vehicle to drive innovation that have the potential to create new jobs and not inhibit creativity.
During prosecution of a patent application, an ex parte Quayle action or simply a Quayle office action arises from the matter of Ex parte Quayle, 25 USPQ 74, 1935 C.D. 11; 453 O.G. 213 (Comm’r Pat. 1935), and is issued when the claims of a patent application are considered allowable on the merits, but minor formalities or objections prevent the application from being allowed to procure the patent.
A Quayle action ends prosecution on the merits, which means examination of the application is terminated and amending the application to correct the formalities or objection will result in placing the application in a condition of allowance. Quayle actions need to be responded within 2 months, however the response time can be extended to another 4 months ( 6 months total) by submitting an extra time extension fee.
International patent applications for U.S. based inventions can be filed within one year (12 months) of filing a U.S. utility patent application (provisional or non-provisional filing). The important thing to note, however, is that the one year clock starts from the earliest filing from which priority is claimed. Therefore, the one year clock starts from the date of filing the provisional application, if filed. If no provisional application is filed, then the one year clock starts from the non-provisional filing.US based applicants cannot directly file an international patent application. You must file a US application first and be granted a foreign filing license (which is automatically granted, unless the USPTO determines not to issue one — which is extremely rare).
Assuming a foreign filing license is granted by the USPTO, filing an international patent application can be achieved in two ways – direct filing or PCT filing.
PCT filing fees are significantly higher than direct filing in each member country (which needs to be paid anyway when entering national stage). So if the applicant wants to file the international patent application only in one or two countries, direct filing may be economical. However, if the applicant wishes to file in more than two countries, then a single PCT filing with the IB remains a convenient option, as it avoids the need to hire a local patent attorney at each country to perform the direct filing. Another advantage of the PCT application is the extra time allowed (18 months) to pursue the national stage. Since most international patent applications are filed before knowing the economical successful of an invention, the extra time helps the applicant in determining the commercial viability of the invention before pursuing patent applications at each foreign country.
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A utility patent can be either be filed as a provisional patent application or as a non-provisional patent application.
A Provisional Utility Patent application establishes a filing date, but does not mature into an issued patent unless the applicant files a regular non-Provisional Utility Patent application within one year. A provisional application includes a description and drawings of the invention, but does not require formal patent claims. There is no examination of the application, and the application is held in confidence at the USPTO.
Most importantly, since the implementation of the “first to file” rules (and abandoning the historically known “first to invent” rules) on March 15, 2013, it is important to file a patent application as soon as possible. Filing a provisional patent application that adequately describes the invention will establish priority and satisfies the need to act swiftly under “first to file” rules.
The advantage of a provisional application is usually when the applicant is in the process of developing the idea, and knows that the final implementation might change or deviate due to an improvement (or for any other reason). In such a case, the change or deviation can be filed as another provisional application, or can be directly be disclosed into the non-provisional application, when filed.
A non-Provisional Patent application is a complete patent application that is examined by the patent office. A non-Provisional Utility Patent application can claim priority (or piggyback) from a filing date of a provisional application (and thus can preserve your invention filing date). The non-provisional application requires a detailed description, formal drawings, an inventor declaration and any other information disclosure statements. It is important that the non-provisional application is crafted well as this document can eventually yield into a patent.
Another important aspect to note is that once a non-provisional application is filed, no new matter can be added into the application (note how this is different from a provisional patent application). Thus, any improvement to the technology will have to be filed into another patent application (e.g., a continuation of the non-provisional application).
However, once a prototype of the invention has been finalized, it may make economical sense to file a non-provisional application directly (skipping the provisional application) as the applicant can save the costs of preparing a provisional application.
Furthermore, in most circumstances, after 18 months of filing the non-provisional application, the application is published by the patent office and the contents of the application are made public.
Can you patent a mobile app based idea? of course. However, there are caveats involved.
You go to your patent attorney and provide him/her your disclosure:
The mobile app can match ride sharing users all heading to the same location. It does the following:
Of course you provide other details and augment your disclosure with flow charts, etc., but you do not disclose the most important step — that is — how a computer performs the actions of identifying the users, estimating a route, informing the members of the route, etc.
The patent office rejects your application holding it to be an abstract idea that was implemented on a mobile device (a computer), as it did in the real patent application . Subsequently, just like the real Applicant ( the big technology company) you abandon the application.
Unfortunately, in the land of Alice , such patent applications get rejected (and eventually abandoned) on a daily basis. Big technology companies (or big law firms) are not immune from the high standards the patent office expects from software patent applications.
The lesson here is: before attempting to file a patent (at least before pursuing a non-provisional filing) for a mobile app, please ensure you have a technical write-up on how a computer (not a human) performs the actions that you propose to be your invention. If you are unable to provide such information, you might be setting yourself up for failure.
The reader is also reminded to follow these tips when selecting a patent attorney.
Yes, you may refile a provisional patent application as long as you have not publicly disclosed your invention and understand that you will not be able to take advantage of the previous provisional filing date.
Let’s get into the details:
A provisional patent application is a temporary filing that holds your spot in a time based queue called the priority date, which, in case of provisional applications, is the filing date. This is the date the USPTO recognizes as your invention date. In other words, anyone who came up with a similar idea as yours after your invention’s priority date will have inferior rights to you – in other words, they won’t be able to obtain a patent on the exact idea of your invention (as long as you pursue a non-provisional patent application claiming priority from the provisional filing).
And before we address the main question, another important aspect to be aware of is that provisional patent applications are held in confidence at the USPTO. This means that unless you publicly disclose your invention or the fact that you have filed a provisional application, no one will know about its existence. So refiling a provisional application simply means discarding the previous application and filing a new one, and being awarded with a new priority date.
And this brings us to the main question — what happens if you refile a provisional application? Since a refiled provisional application will be awarded a new priority date, if anyone filed an application disclosing a similar invention after your first (original) provisional filing, but before the second (refiled) provisional filing, that person now holds superior rights over the invention than you.
And to make things a little more complicated (since nothing is simple in patent law) also keep in mind, statutorily, you have one year from publicly disclosing your invention to file a patent application. Thus, you may not be able to refile the provisional application if the refiling happens to be more than one year after your public disclosure. What constitutes as public disclosure is a complicated subject by itself. For example, a casual conversation regarding your invention with your best friend over dinner can be considered as a public disclosure (depending on what was disclosed).
To summarize: Yes, you may refile a provisional application, but your invention’s priority date will change and this may affect your innovative rights.
Provisional patent applications are not published and thus are not searchable. Provisional patent applications are held in confidence and are not examined until a corresponding non-provisional application is filed.
After a non-provisional application is filed it is generally published within 18 months of the first application filing (unless a timely non-publication request is submitted). At publication the electronic file wrapper of the application is made public by the USPTO. The file wrapper of the non-provisional application is linked to the provisional filing, and thus only at this stage is the provisional patent application filing available for inspection. However, the contents of the provisional patent application are never published.
To create a monopoly by preventing another from practicing your invention is serious business and should not be presumed as an easy or cheap task.
The average fee charged by a reputable attorney for a patent application is:
Why does it cost so much?
As an industry practice, patent attorneys charge by the hour. While we may be able to offer a flat fee pricing, behind the scenes each quote involves a good faith effort to guess the number of hours we might spend on your matter.
But ‘xyz professional’ that I found Online is much cheaper. Why so?
Unfortunately, there are many unscrupulous professionals out there who will happily take your money but fail to deliver results. You will find numerous Online professionals offering a “too good to be true” pricing/ fee structure.
Since a patent professional is going to calculate the number of hours they spend on your matter those offering to draft a non-provisional utility application for $3,500, with an hourly rate of between $300-$500, would probably spend between 7-12 hours on the matter (depending on their billing rate). However, this is not good enough. Further, you should be wary of a professional offering a lower hourly rate (there’s a demand for patent professionals; if a professional is offering a lower hourly rate, ask yourself why is this professional offering their services below market? There is always a catch!)
Are patent agents basically attorneys, but cheaper?
Absolutely not! Agents are usually a good option when they work under the guidance of an attorney. Agents can assist with writing applications and are familiar with the procedural requirements to file an application, but they are not trained to be lawyers and are NOT allowed to offer legal advice (and generally have poor knowledge) about the substance of case law.
The problem with the cheaper xyz professional you found Online.
Once examination of your application begins, you will start receiving office action rejections (as is the norm). However, if the application is not well drafted, you may get stuck in a “hell-hole” resulting in repetitive rejections that soon becomes prohibitively expensive. The result: you are forced to abandon the application — thousands of dollars wasted with nothing received in return.
To summarize: if you opt for a “not so cheap” service you might land up paying a little more ( depending on the attorneys hourly billable rate).
However, if you select a cheap service, you may not get anything at all.
You are also encouraged to read our tips on how to select a patent attorney.
While searching for a patent professional, you may notice the following:
A few tips to select a patent professional are:
1. Attorneys usually bill by the hour, and while we might offer you a flat fee, internally all fees are calculated based on an estimated number of hours one is most likely going to spend on the matter.
2. The Internet has a plethora of professionals who would draft an initial non-provisional application (main utility filing) for as little as $3,000, it is our opinion that those professionals are doing you a disservice, since the success rate of getting a patent allowed with such professionals would most probably be extremely slim. What good is a cheap service if it doesn’t result in a patent? At an average it takes 2-4 years to get a patent granted. That means, filing a patent application (yes, it is only an application until granted) is just one step of many many more to come.
3. Getting a patent allowed is a complicated process and takes time to strategize and plan. And it all starts from the initial drafting. In that respect, patent applications are no different than a game of chess, where predicting the other party’s move in advance can result in winning the game. However, if the initial execution is flawed (as it may be with cheap offerings available online), everything will fall down like a house of cards.
4. If you can, prefer patent attorneys over patent agents. While agents market themselves as “same as an attorney, but cheaper,” you should note that they did not go to law school, and did not pass any state bar exam. While agents, like attorneys, have passed the patent bar exam, the patent bar exam has nothing to do with a substantive understanding of the law. The patent bar exam is only a test of procedural rules followed by the USPTO. The fact is law school (and a state bar exam) assists an attorney to develop certain skill sets (like persuasive writing, negotiation skills, providing a legal analysis of case law when the examiner does not play nicely, etc.) which a non-lawyer patent agent is not trained to appreciate.
5. Finally, always ask for samples of past patent work. You should be careful if an attorney provides you a patent application publication as a sample. Patent publications are patent applications that have been published. They are not patents. Read the document caption carefully, it will let you know if it’s a patent application or patented matter. In the header section a patent publication will state “United States Patent Application Publication,” while an issued patent will state “United States Patent.” To see a patent document, please look at our portfolio section for examples. So, while a patent application document may look similar to an issued patent, an application may very well be abandoned ( and thus may not be significant).