Washington, D.C. | November 2015 – Sunjeev Sikand was quoted in the November 2, 2015 edition of IP Law360 regarding the impact of the U.S. Patent and Trademark Office’s high rejection rate of patent applications for computer-related inventions following the U.S. Supreme Court’s Alice ruling.
The article titled Wave of USPTO Alice Rejections Has Cos. Tweaking Strategies states that it has become clear from the statistics that applications for patents on ways of performing business methods more efficiently using a computer face a difficult or nearly impossible path at the USPTO. If there’s no other way to frame the invention, clients may have to rethink seeking a patent: “You’ve got to be honest with them,” said Sunjeev Sikand of RatnerPrestia. “The law can change, but the numbers are what they are. They’ve got to make a business decision about whether it makes sense to spend money on an application.”
Apart from the high rate of 101 rejections in Technology Center 3600, the rate has been lower in USPTO Technology Centers that deal with related technologies. Technology Center 2100, which handles computer architecture and software and Technology Center 2400, which handles computer networks and security, have had 101 rejection rates of around 15 percent in recent months.
Sikand said applications assigned to those technology centers often look similar to those assigned to Technology Center 3600, and stand a better chance just by virtue of where they end up.
The USPTO assigns patent applications to technology centers, but by writing narrower claims and highlighting the technological aspects of the claimed invention, applicants can seek to steer patents away from Technology Center 3600, attorneys say. Simply getting the applications assigned to a different center can give them a better chance of avoiding rejection, and focusing on technology can also help.
“If you do it right, hopefully it will get into a tech center in the 2000s and it may not face a 101 rejection at all,” Sikand said.
“Unfortunately, the patent office is really on guard about letting something through the floodgates that might embarrass them,” Sikand said.
Mr. Sikand has authored numerous articles in IP Law360 and Intellectual Property Today relating to the Alice decision and patent eligibility under Section 101.