How to Draft Patent Applications in the Post-Alice Era

How to Draft Patent Applications in the Post-Alice Era: The Alice case sets a precedent in inventions related to Intellectual Property (IP) and software. Under the fresh, more rigid norm, district and appeal courts have invalidated more than 370 software patents and rejected two out of three patent apps brought before them since the Alice judgment.

Post Alice, there has been a spur in the number of 101 rejections in every Technology Centre (TC) (% value in the graph below indicates the total number of cases handled by the TC that were rejected under 101).

However, the change in patent norms has altered the current landscape. Innovators are considering changing the approach to maximize both patent and trade investment.

Given the trouble of obtaining patent permission, drafting applications becomes a little confusing and technical to an innovator.

Post Alice scenario                       

Of late, one of the serious bottlenecks in the allowance of software and covered business method to draft patent applications, has been the “subject matter eligibility” under 35 U.S.C. § 101. Recently, after the decisions in Alice Vs. CLS Bank and Enfish Vs. Microsoft cases, even those inventions conceived after substantive R&D, are denied a patent.

The primary reason behind this is the improper drafting style of the patent applications for these inventions. Primarily, the two-prong test set forth in Mayo, was extended to Alice. The first part of the test requires – “is there an abstract idea in the claims?” while the second part requires – “is there anything in the claim that can be regarded as significantly more than the abstract idea(s)? Since, there is no concise definition of what exactly an abstract idea is, (at some level every feature can be assessed as an abstract idea), the second part of the test is of prime importance.

Why a different approach to draft patent applications needed?

A different approach to drafting patent applications is needed so that the reader can understand what the innovation is, what the problem is to be solved, or the technical details of how the innovation solves the problem and achieves the functionality specified.

If the disclosure of the invention has adequate technical material, the practitioner will be well placed to start draft patent applications. The implementation will be based on technical content, while the company content will be displayed as an exemplary implementation of the entire technology. Ideally, the inventor will also describe other non-business applications.

Download our eBook for effective drafting tips, as well as different scenarios and their solutions in the post-Alice era.

– ICT Drafting Team and The Editorial Team

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