Since June of 2014, Alice has become one of the most feared names in patent prosecution. Rejections citing Alice have multiplied exponentially since then, and they now account for more than 60% of §101 rejections and more than 8% of all rejections, as of our latest analysis.
But Alice rejections aren’t necessarily fatal to an application – and we found the firms to prove it. Which firms are the best at overcoming Alice rejections and getting to an NOA? Read on to find out.
When we talk about success against Alice rejections, we’re really looking at two main measures:
the Alice allowance rate, or the percentage of applications that had one or more Alice rejections but were eventually allowed;
and the Alice overcome rate, or the success rate at overcoming Alice rejections on the first try. In these cases, either the application’s next office action doesn't reference Alice or the next office action is a notice of allowance.
The first is a measurement of strategic effectiveness – getting from rejection to allowance – while the second looks at tactical effectiveness – getting past one Alice office action and then facing the next.
To get a better idea of how successful firms are against Alice rejections, we looked at disposed applications with an Alice rejection from June of 2014 through December of 2017, and narrowed our review to firms that are experienced in handling those rejections. We looked at two lists of firms:
The first, larger sample size (we’ll refer to it as our “All Firms” list from here on out) included 368 firms with at least 50 disposed applications that had experienced an Alice rejection. The second, smaller list we reviewed was made up of only high-volume Alice filers. It only included firms with at least 500 disposed applications that had experienced an Alice rejection – a short list of 24 firms.
The USPTO average Alice allowance rate is 54.6%. Looking first at our All Firms list, majority of the firms performed above average.
The firms with the best Alice allowance rates may not be the largest or perhaps even the most well-known, but with Alice allowance rates significantly higher than the USPTO average, these firms aren’t letting those rejections stand in their way of an allowance.
We noticed a similarly impressive performance when it came to Alice overcome rates. These firms easily bested the USPTO average Alice overcome rate, which is 32.8%.
A high Alice overcome rate means that these firms were efficient in getting applications past an Alice rejection, as opposed to firms with a high Alice allowance rate, who may be more dogged in their prosecutions. Only two firms - McCoy Russell and Eschweiler and Potashnik – ranked for both Alice allowance rates and Alice overcome rates.
Let’s turn our attention now to our high-volume filers. Here, we do see a slight regression back toward the USPTO average for both Alice allowance and overcome rates, though these top 10 are still performing above average.
While these allowance and overcome rates may be lower than those from our All Firms list, it is important to note that our 24 high-volume Alice filers handle 30.6% of all Alice applications. This volume makes them more at likely to experience negative Alice outcomes.
Alice is a constant threat to these firms, and to many of those filing patents related to business methods, financial services, and software-dependent innovations. But thanks to patent analytics, practitioners can now leverage data to make strategic decisions before, during, and even after prosecution.
Before you apply:
Identify high-risk prosecution. It’s clear that some classes are hotbeds for Alice rejections (hello, Class 705!). Juristat Drafting can identify your application's likely class, art unit, or tech center assignments, helping patent professionals plan a potential response strategy.
Find the best firm to handle your prosecution. For in-house counsel facing a potential battle against Alice rejections, you need to find a firm that can handle it. Juristat Business Intelligence can help you see how IP firms perform against Alice rejections.
Once prosecution has started, use patent analytics to:
Know your examiner’s behavior. Knowing how an examiner has applied Alice in the past can help you prepare for a more successful prosecution. Juristat Examiner Reports detail each USPTO examiner’s rejection history, allowance rates, and more to help tailor a prosecution strategy to meet your examiner’s unique preferences.
Manage client expectations. While patent attorneys may be well aware of the risks of an Alice rejection, clients aren’t always prepared. Patent analytics make it possible to communicate and set expectations with clients before getting too deep in a costly prosecution.
And after successful prosecution:
Capitalize on your success. Nothing wins more clients like a proven track record. Thanks to Juristat’s dynamic data, law firms can show off their winning strategies to potential clients.
Stay ahead of the competition. Zero in on critical technologies and competing assignees to see where they’re investing their IP resources. Juristat Platform’s powerful search algorithms and intuitive interface help sift through more than 10M pending, abandoned, and granted patent applications.
Comprehensive analytics can help you craft a strategy to successfully overcome Alice, or any other hurdle you face during prosecution. See how Juristat helps minimize uncertainty and maximize success.