Patent practice in a time of Alice

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.