Kilpatrick Townsend attorneys Kate Gaudry, Ph.D. and Thomas D. Franklin recently presented at the Practising Law Institute’s 11th Annual Patent Law Institute regarding “Software/EE: Are We There, Yet?”.
Key Takeaways from the presentation include:
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Patent-Eligibility Test – Poorly Suited for Consistency
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Almost all software innovations are vulnerable to an abstract idea accusation under patent eligibility guidelines. For example, patent office examination guidelines indicate that a claim “comparing new and stored information using rules to identify options” is abstract.
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Patent office instructions require a deep analysis of case law, although very few examiners are lawyers.
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“Significantly more” qualification is ill-defined.
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Post-Alice, Allowance Rates Vary
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Allowance prospects in business-method art units where eligibility rejections are common are an order of magnitude lower than in other areas with similar technology.
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Recently, business-method allowance rates have been inching higher (coinciding with management personnel change).
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Crafting Strategies in View of Examiner and Art Unit Variability Improve Prosecution Results and Costs
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There is no one-size-fits-all prosecution strategy, as examination tendencies vary
across art units and over time.
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Examiner statistics predict post-amendment allowance prospects.
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Art unit allowance rates predict prospects of pre-decision allowances in appeal cycle.
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Empirical data is useful to determine whether (and how) to file an amendment, appeal,
abandon, etc.
