Senior Counsel Daniel Rose was quoted in a Law360 article, “Alice Still Packs A Punch, But With A Little Less Sting,” about the long-term effects of a 2014 U.S. Supreme Court decision restricting patent eligibility.
Rose said guidance on patent eligibility issues put out last year by the USPTO has taken away some of the discretion examiners had to reject applications under Alice, which had sometimes been taken to extremes. “For example, we would get rejections that would just copy and paste the entire claim into the rejection and say that’s the abstract idea,” he said. “And frequently, that makes no sense.”
The guidance has also made it easier to predict whether an application will be rejected, Rose added. “For new applications that we’re still drafting where we can add in details about how the invention is an improvement on technology, I don’t think it’s a problem at all,” he said. “It’s still something we think about, but it’s not the sort of thing we’re afraid of anymore, the way we would have been shortly after Alice.”