It has been over three years since the U.S. Supreme Court issued its “Alice” decision in Alice Corp. Pty. Ltd. V. CLS Bank International, 134 S. Ct. 2347 (2014), which established a two-part test for determining subject matter eligibility under 35 U.S.C. § 101.
The holding in Alice outlined a framework for evaluating claimed subject matter for patent eligibility. At the first step, the claim is reviewed to determine if it is directed to something "abstract" (and therefore not patent eligible under 35 U.S.C § 101). If the claim is determined to be abstract, then at step two of the Alice framework, the claims are reviewed to determine if they offer something “significantly more” than the abstract idea.
Since 2014, numerous software patents have been invalidated under the “Alice test” by various U.S. federal district courts and the CAFC (Court of Appeals for the Federal Circuit) as lacking subject matter eligibility. The Alice test for determining patent eligibility was thought by some to be the final "nail in the coffin" for software patents.
This has proven, however, not to be the case. Most of the patents invalidated under “Alice” in the courts over the last several years were drafted, filed and prosecuted to issuance before the Alice test was established (i.e., prior to the Alice decision). What this means from a practical standpoint, is that very few of these patents were examined according to the Alice framework by a patent examiner at the USPTO (U.S. Patent & Trademark Office). Most of these invalidated patents were filed and prosecuted years before the Alice decision.
An issued patent, examined by a patent examiner under the 35 U.S.C. § 101 Alice framework, generally stands a better chance of surviving a post-grant Alice challenge (e.g., during litigation). That is, while there are no guarantees that a patent that issues over Alice will survive a later “Alice” challenge during litigation, having a patent issued over an Alice eligibility rejection strengthens the patent prosecution record. For example, a statement in the prosecution record by a patent examiner indicating that the claims are not directed to an abstract idea, or that the claimed features add “significantly more,” may bolster the defense of a patent (software or otherwise) against a subsequent Alice challenge.
OL Patents has prosecuted a number of patents to issuance over Alice type rejections. For example, U.S. Patent No. 9,690,772, which issued on June 27, 2017, contains claims covering “aspect-based sentiment analysis for opinion mining” including machine learning classification claims. The claimed subject matter covers software. This patent was initially rejected during prosecution under a 35 U.S.C. § 101, but was eventually allowed by the examiner.
U.S. Patent No. 9,683,836, which issued on June 20, 2017, covers claims for “vehicle classification utilizing a laser scanner” including claimed software features such as “pre-processing,” “compiling,” “classifying” and so on. This patent was also prosecuted to issuance over the patent examiner's Alice rejection.
While prosecuting software related technology remains challenging in the post-Alice landscape, the effort has a payoff. Software related patent claims that issue after an Alice examination increase the likelihood that those claims will also survive a post-grant Alice challenge. As a result, such claims can ultimately provide patent holders with a more valuable asset.