The
Alice Corporation vs CLS Bank Limited decision by the Supreme Court of the United
States has cast a huge shadow over software and business method patents. Many
are concerned that their previously valid granted patents are now invalid. Many
are also concerned about “non-patentable subject matter” rejections during
patent prosecution.
Usually
with such decisions, as time progresses, the situation becomes clearer. This
has been the case with the Alice decision. Since Alice was brought down in June
2014, the US Court of Appeals for the Federal Circuit has produced clarifying decisions.
Based on these clarifying decisions, the United States Patent and Trademark Office
(USPTO) issued clarifying guidelines in December 2014 and July 2015.
Therefore, strategies
which give applicants time and flexibility to amend patent claims are valuable in
counteracting the effects of Alice. Such strategies include, for example, those
which provide future opportunities to draft new patent claims; and defer
prosecution of a pending patent application.
Strategically
using continuation and continuation-in-part (CIP) applications helps provide future
opportunities to draft new claims. In the prosecution of an initial
application, applicants may submit very narrow claims to overcome Alice
rejections. However, if the applicant then files either a continuation or a
continuation-in-part, the applicant may be able to obtain broader claims as new
clarifications are issued. Furthermore, if an older patent in a family is
invalidated due to Alice rejections, having live continuations and CIP
applications in the family allows preservation of patent protection.
Applicants can
also defer prosecution by filing provisional patents. After filing a
provisional patent, an applicant can wait for up to 12 months before filing a
nonprovisional application claiming priority to the provisional patent. One
strategy is as follows: During the 12 month period, the applicant actively
monitors for clarifications. On receiving clarifications, the applicant can file
new provisional patents with modifications based on these clarifications. At
the end of the 12 month period, the applicant can file a nonprovisional claiming
priority to the previously filed provisional patents. This helps reduce Alice
claim rejection risk in prosecution.
This “rolling
provisional” strategy is potentially cheaper and less time consuming than dealing
with Alice rejections in prosecution over multiple office actions. While there
is a downside of having to wait 12 months to file the corresponding
nonprovisional, this is countered by the reduction in time and cost spent
dealing with an Alice rejection. Furthermore, over a 12 month period avenues to
protect difficult to patent subject matter may arise after the clarifications
are issued. Using rolling provisionals affords applicants ways to exploit these
new avenues.
In
conclusion, while Alice has created, and continues to create uncertainty around
software and business method patents, it is likely that with time the situation
will become clearer. Therefore strategies that extend the timeline to obtain
patent rights such as filing of continuations and continuations-in-part and
using rolling provisionals will be valuable.
