Over on the EFS-Web listserv, a list member asked:
Is anyone aware of any training materials, articles, guides, etc. providing best practices/strategies for claim drafting to avoid Alice issues in new patent applications?
Here’s what I think about that:
In my view, the best practices and strategies are quite unchanged from what they were twenty years ago. There are half a dozen things to try to be smart about, including these four points:
- Make sure each claim contains things that you can drop on your foot.
- Make sure each method claim has a concrete and tangible result.
- Make sure that you provide actual structure to support any means-plus-function or step-plus-function elements.
- Provide figures showing physical structure.
In my view you can read the Alice case from the top to the bottom and nothing in the text of that case adds any meaningful guidance to what people have been doing for twenty years. I think that the smart things that practitioners were doing twenty years ago to get software and algorithms and business methods through the USPTO are still the smart things to do now even after the Alice case.
What do you think about this? Is there really any actual teaching in the Alice case that adds to what practitioners have been doing for twenty years now? Please post a comment about this.