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:

  • Patent-Eligibility Test – Poorly Suited for Consistency
    • 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.
    • Patent office instructions require a deep analysis of case law, although very few examiners are lawyers.
    • “Significantly more” qualification is ill-defined.
  • Post-Alice, Allowance Rates Vary
    • 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.
    • Recently, business-method allowance rates have been inching higher (coinciding with management personnel change).
  • Crafting Strategies in View of Examiner and Art Unit Variability Improve Prosecution Results and Costs
    • There is no one-size-fits-all prosecution strategy, as examination tendencies vary across art units and over time.
    • Examiner statistics predict post-amendment allowance prospects.
    • Art unit allowance rates predict prospects of pre-decision allowances in appeal cycle.
    • Empirical data is useful to determine whether (and how) to file an amendment, appeal, abandon, etc.