This posting is about USPTO’s internal ‘politics’ and how it affects your software patent rights when it comes to business method related patent applications, and more importantly how a patent attorney can use this information to benefit their clients.
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 within the USPTO, overcoming the rejection can be easy or a nightmare. Since the last two years, applications that are purely based on a business method, that is, a way to implement a business idea using technology (like advertisements, financial services, hotel reservation systems, etc.) often get assigned to an art (group) unit between 3622-3629 or 3680-3693. Unfortunately, these departments are notorious in 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 the 101 based abstract rejections until the applicant gives up all hope and abandons the patent application. If you’re not familiar, you can read about the the patent process here.
Let’s take art unit 3681 as an example with matters pending between the time period of January 1, 2015 and August 27, 2017 (the writing of this post). According to USPTO data, this art unit has 1,604 patent matters that have had at least one office action rejection in the last 2.5+ years. Out of these only 67 (there is no typo!) have been awarded a patent. It’s important to note this is statistical data from only one art unit. All the above mentioned art units have similar patent grant rates.
Thus avoiding these art/group units might be pragmatic. But how does one do so? The best option available to an attorney is by drafting the software patent application in such a manner that the invention highlights a technical advantage in computer technology instead of a business advantage created by the use of technology.
How technical details can help you secure your software patent rights?
With technical details in a software patent application disclosure, it may be possible to draft an application that highlights a technical advantage even when a business advantage of using the technology is desired. While it might not be possible to do so in each matter, careful planning at the initial stages of drafting an application by a patent attorney can be useful to secure ones patent rights, and also reduce your total costs of procuring the patent.
The reader is also reminded to follow these tips when selecting a patent attorney.
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