“I have not yet run into an Art Unit that does not have someone designated as an Alice expert,” explained JiNan Glasgow of Neopatents. “They won’t always tell you who it is, but they all say they have an Alice expert.”
While discussing the importance of doing interviews in every single case, Glasgow explained that although it is not something that has been generally publicly disclosed by the Patent Office, “in every art unit examiners confirm that there is an examiner within the Art Unit who is the Alice expert and that examiners have said that even if they are ready to allow a case, nothing can be allowed without the approval of that Alice expert.” This applies to TC 3600 and beyond, according to Glasgow.
If what examiner after examiner has told Glasgow is correct, this means there is essentially a return to the so-called “second pair of eyes” review at the Patent Office.
Those who have been involved in patent prosecution going back 12-15 years will recall that, after the initial rush of business method patents began, in about 2002, the Patent Office instituted what they referred to as “second pair of eyes” review. Under no circumstances could a patent be issued on anything that related to a computer-implemented invention unless and until it had been approved by two separate patent examiners. It certainly sounds like that is what is happening once again.
Second pair of eyes review wreaked enormous havoc on the patent system, and was one of the primary reasons patent pendency got out of control and the backlog of patent applications grew to well over 1 million unexamined patent applications. It is not at all an exaggeration to say that second pair or eyes review nearly broke the Patent Office and crippled the U.S. patent system. The fact that second pair of eyes, or some Alice equivalent or hybrid, has returned to the Office is disheartening.
“Of course, if the examiner assigned to the case decides not to issue the claims, the Alice expert does not get involved,” Glasgow explained.
In some cases, it can be helpful to invite the Alice expert into the conversation during prosecution, if, for example in a telephonic interview, if it does not appear that progress is being made with the examiner. It can be helpful to ask the examiner if the Alice expert in their Art Unit would be available to participate, if only to streamline the process and determine if there is any likelihood of success at all within that particular Art Unit.
The return of second pair of eyes to Alice-affected Art Units could explain why so many applicants seem to believe that the SAWS program (“Sensitive Application Warning System“) continues despite announcements from the USPTO that it has been discontinued. When a process is in place requiring multiple reviews (official or de facto) before allowance, even if you are lucky enough to be working with an examiner who is inclined to allow your patent claims, there is no guarantee that you will get your claims allowed. The ultimate decision maker may not be the examiner you are working with, even if you are working with a primary examiner. Of course, primary examiners are supposed to have decision-making authority. Instead, the final decision maker, whether officially or informally, may be the Alice expert assigned to the Art Unit where your application was assigned. This suggests it is very important for applicants and patent practitioners to attempt to secure the presence of the Alice expert during any interview, particularly when roadblocks have been encountered or you are in an Art Unit with a particularly low allowance rate.
Despite the return of second pair of eyes review, we do still know that the Patent Office continues to allow software patents, albeit in small number. And there seems to be no favoritism being played, with large multi-national corporations sometimes suffering the reopening of prosecution after a successful appeal or after filing an appeal brief, for example. For patent practitioners, the vagaries of patent prosecution means that advanced strategies need to be employed and a one-size-fits all approach to prosecution simply will not work.
Tags: Alice experts, Alice v. CLS Bank, patent, Patent eligibility, Patent Examiner, patent examiners, Patent Office, patents, second pair of eyes, USPTO
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