Best practices/strategies for claim drafting to avoid Alice issues?

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.

3 Replies to “Best practices/strategies for claim drafting to avoid Alice issues?”

  1. I love the “drop on your foot” part. The question is, how bad does it have to hurt if you drop on your foot? Certianly dropping a robotic arm with software/firmware loaded on it foot would hurt a lot (and hopefully that makes it more patentable), however, what about dropping a small memory card on your foot that has some baked in software/firmware? Would reciting that memory card be enough of a physical embodiment to satisfy 101?

  2. In the old days, like more than a year ago, adding that the thing was “stored in a memory” nearly always made the 101 problem go away. In fact an Examiner who was trying to be helpful might actually suggest this sort of fix.

    Within the past year, USPTO’s training materials for Examiner have taken a more hostile tone regarding claims like this. The training materials will hint around that even a recitation that it is in a memory will not automatically obviate the 101 question.

    But even in recent months, sometimes we get lucky and adding word or two about memory sometimes works. I guess this is tied to factors not completely within the control of the applicant, such as whether the Examiner is happy or unhappy about what he or she had for breakfast that day.

  3. I disagree that the best practices from X years ago are applicable to Alice today, particularly for finance-oriented inventions. I’d love to see a sample claim that you think is patentable post-Alice for a finance-oriented invention.

    At the end of the day, the sine qua non is not to elevate form over substance. So if your invention is patent ineligible, I haven’t found any “trick” to make it otherwise.

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