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Prevailing through the uncertainty of 35 U.S.C. § 101


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The Supreme Court’s decision in Alice Corp. v. CLS Bank, created turmoil at the USPTO over the issue of what exactly constitutes patentable subject matter under 35 U.S.C. § 101. The consequences of Alice have been dire for patent applicants, especially those seeking patent protection for their inventions in the field of software technologies. Good thing about storms is they don’t last forever. At some point, the sky inevitably clears and the sun shines once again. The focus of this article is providing some practical advice on how to weather Hurricane Alice ensuring that your patent application is still pending when the turmoil ends.

Rays of sunshine are already breaking through the dark storm clouds—even if in the distance. In recent weeks, Intellectual Property Owners Association (IPO) and American Intellectual Property Law Association (AIPLA) offered legislative proposals for rewriting 35 U.S.C. § 101. If passed by the Congress, these proposals would significantly narrow the scope of the statute: only those inventions that exist in nature independent of any prior human activity, or can be performed solely in the human mind, would be ineligible for patent protection. All other inventions that fall outside of these two categories would satisfy the patentable subject matter requirement of the new 35 U.S.C. § 101. Although patent applicants who have been battling § 101 rejections should be jubilant about the prospect of this provision being enacted into law, they will benefit from this much-welcomed development only if their patent applications are still pending when this change arrives.

So what is the best strategy for keeping your patent application alive until the sunny weather? The answer depends on the individual facts of each case and the field of the invention. A skilled patent practitioner has many tools at her disposal for shepherding your patent application through this storm while minimizing the cost. Provisional, continuation, divisional, and continuation-in-part filings, requests for continued examination (RCEs), appeals, and requests for deferred examination are a few examples of actions your patent attorney can take to help preserve your constitutional right to a U.S. patent for the technology you invented.

A recent allowance Smith & Hopen obtained for one of its clients is a case in point. We filed a patent application for an invention in the field of financial software technologies shortly after the Alice decision. USPTO twice rejected all pending claims under § 101 citing Alice. Realizing the high value of the claimed technology, our client did not give up. We continued to fight the rejections and extended prosecution through an RCE. Our persistence paid off. During pendency of our client's application, the Federal Circuit issued several important decisions pertaining to patentability of software inventions under § 101—most notably, DDR Holdings v. and Enfish v. Microsoft. Armed with this powerful, new precedent, Smith & Hopen successfully defended its client’s rights and secured an allowance for this valuable invention.

 Every storm ends. Our advice is to make sure that your patent application is still alive when the sunny day arrives.

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