In its 2014 Alice Corporation v. CLS Bank International decision, the Supreme Court invalidated a patent directed to managing settlement risk because the patent’s claims were directed to an abstract idea and thus ineligible subject matter under 35 U.S.C. § 101.1 While lower courts and the U.S. Patent Office are still struggling to determine when claims are directed to an abstract idea,2 it is clear that the Alicedecision has made it more difficult for claims to meet the standard for patent eligibility.
Not only has this decision provided difficulties in prosecution, many issued patents may no longer be valid in a post-Alice world. Indeed, Judge Moore warned that Alice“is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents.”3 Thus, entire patent portfolios may be invalid underAlice. More troublesome is the uncertainty surrounding many of these types of patents as to whether the claims recite patententable subject matter.
This uncertainty, however, may be addressed through reissue. U.S. patent law authorizes the Patent Office to reissue defective patents. The Patent Office may reissue patents that are deemed inoperative or invalid because of (1) a defective specification or drawing, or, (2) if the patentee claimed more or less than it had a right to claim.4 A reissued patent expires on the same day that the original patent would have expired.5 A reissue application is examined in the same manner as a non-reissue, non-provisional application.6 The claims may be amended to address issues of patent eligibility so long as the amended claims have support in the specification in accordance with 35 U.S.C. § 112.7 Thus, a patent owner may have the opportunity to amend ineligible claims during reissue. Obtaining a reissue provides the additional advantage of owning an issued patent that the Patent Office examined using post-Alice guidelines and procedures.
Reissuing questionable patents has several obvious advantages. First, patent owners have the ability to amend claims that may be ineligible to bring the claims into the realm of subject matter eligibility. Further, patent owners can assert issued patents with greater confidence that the patents will not be found ineligible under the stricter standards of 35 U.S.C. § 101. This may lead to greater settlement bargaining power. Likewise, patent owners seeking to license or sell their patents have a strong negotiating position when the patents may otherwise be subject to patent eligible subject matter attacks.
However, these patent owners should carefully consider the likelihood of success of a reissue examination before rushing to the Patent Office. The Supreme Court’s test in Alice to determine whether a claim is subject matter eligible is strict, and, as discussed, a patent owner is not allowed to claim subject matter that is not supported by the original disclosure. Thus, patent owners face a risk of losing their patents if they are unable to add features to the claims to bring them into the realm of patent eligible subject matter. This is also an uncertain risk given the that Patent Office--seventeen months after the Supreme Court’s decision in Alice--continues to attempt to clarify how patent examiners should apply such a subjective test for subject matter eligibility.8
Furthermore, a patent owner may need to substantially limit the claim scope in a reissue application. If the patent owner has no intentions of asserting the patent, the owner may wish to forego filing for reissue. This would allow the patent owner to maintain the issued patent with greater claim scope.
In the wake of the Alice decision, many issued patents may be invalid for failing to claim patent eligible subject matter. However, patent owners’ hands are not tied. Through reissue, patent owners can amend patent claims to bring them into the realm of subject matter eligibility. However, patent owners should be cautioned that this poses a risk of losing the issued patent or narrowing claim scope. While there is no general, overarching strategy whether patent owners should file for reissue in view of Alice, patent owners should evaluate their own objectives of patent ownership and consider whether filing fits that strategy.