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:
- Applications Examined: For each unit the total number of publicly available patent applications were determined between January 1, 2015 and February 25, 2018. Out of those, the ones that are not currently examined, abandoned prior to examination, or not yet docketed were removed to determine the total number of applications examined.
- Patents Granted: Includes patented matters, any application for which a notice of allowance has been transmitted, and for which the issue fee has been submitted.
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.