The defensive patent aggregator RPX published a white paper The Prevalence of Software Patent Assertion. It analyzes what type of software claims were asserted (e.g., computer implemented inventions v. covered business method) and by whom (e.g., non-practicing entities (NPEs) v. operating companies) before the Supreme Court decided patent eligibility of software related inventions in Alice v. CLS Bank.
Although the paper appears to aim at which software patents pose the greater threat to businesses, it should have another utility to patent prosecutors. On pages 5-9, RPX presents reasons why a set of representative software claims constitute "a computer implemented invention" or "a covered business method." Initial assignments to art units can play a big role on what happens next. For example, the art units examining business methods are rejecting them under 35 USC 101 at much higher rates. The Supreme Court voted 6-3 business methods are not categorically excluded, but the reality is different art units have different interpretations of 35 USC 101. One can attempt to draft the claim so as to not fall within business methods, but sometimes the subject matter doesn't give much latitude. Thus, during prosecution what type of claim may be more important than the details of the claim.
Copyright © 2015 Robert Moll. All rights reserved.
