Forging Ahead After Losing an Alice Appeal

As we enter Alice’s birthday week, Mark Nowotarski offers a cautious ray of hope for business method applications.

It’s tough to fight on after losing an Alice appeal, but that’s just what most applicants are doing. An “Alice appeal” is an appeal of a patent rejection under 35 U.S.C. 101 for lack of statutory subject matter. The major field of these patents is business methods (class 705). More than half of business method applicants that are losing Alice appeals are taking action to keep their applications alive. The reasons for renewed hopes include the new 2019 Subject Matter Eligibility Guidance that came out in January, as well as the current movement in Congress to clarify 35 U.S.C. 101. With hope on the horizon, now is not the time to give up.

The table below gives some recent examples of how both large and small applicants are continuing to prosecute their patent applications after losing an Alice appeal.

Take Action

If you’ve just lost an Alice appeal, the four actions you can take are:

• File a Request for Continued Examination (RCE): You and your attorney or agent can amend your claims in light of the 2019 Guidance. The claims then go back to the patent examiner for more examination. About half of the requests for continued examination filed in the past 18 months have been successful in getting claims allowed.
• File a Continuing Application: You can refile your application with entirely new claims. This is called a continuing application. If the claims are directed to a different invention described in your patent application, there’s about a 50% chance your application will be assigned to another examiner and/or another art unit. This can increase your chances of getting a case allowed if your current examiner is particularly difficult to reach agreement with.
• File a Request for Reconsideration: If there are errors in the Patent Trial and Appeal Board’s decision, you can point them out to the Board and ask them to reconsider the decision. I was initially skeptical of this approach, but in some cases, like the Oracle example above, applicants are succeeding. This option may also be the fastest way to success.
• File an appeal with the Court of Appeals for the Federal Circuit (CAFC): At the other end of the spectrum is filing an appeal of the Board’s decision to the Court of Appeals for the Federal Circuit. There were more of these than I expected (I honestly didn’t expect any), including one example of an independent inventor filing an appeal.

You only have 63 days to take action after losing an appeal or your application will go abandoned. If you have a pending appeal, it might make sense to consult now with your patent attorney or agent to determine what action would be best should you lose your appeal. The 2019 Guidance has increased the chance of prevailing on appeal, but the loss rate is still 80%.

Know Your Examiner

An important consideration in determining how to best proceed is to determine how your particular examiner has responded to the 2019 Guidance. As we reported last month in “Business Method Patents Recover Under USPTO Guidance”, overall allowance rates are up in business methods. Most examiners now have a broader view on what qualifies as statutory subject matter. If you review what your examiner has allowed since the new guidance came out, that may point the way to claim amendments that will be successful should you decide to file an RCE.

Not all examiners, however, have responded with equal enthusiasm to the new guidance. If you have one of the more reluctant examiners, then that may point you towards the option of filing a continuing application. You even have the option of adding more technical content to your patent application if that is lacking in your original filing. The more technical content, the better. Redrafting with new technical content, however, without sacrificing your original filing date, is quite tricky. Nonetheless, several patent agents and attorneys I have spoken with have found this approach to be quite effective.

There are many options available to an applicant after losing an Alice appeal. Talk to your patent attorney or agent about what the best options might be for you. If your invention is important, you can still fight on.