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.