Overcoming Alice: An Empirical Analysis of Granted Patents Since Alice

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The U.S. Supreme Court’s Alice v. CLS Bank decision swung the pendulum, putting the patent eligibility of software inventions and business method patents into question.  In the wake of Alice, the U.S. Patent and Trademark Office abruptly halted allowance of these categories of patents and companies saw their patent allowance rates fall to almost nil.  Even after releasing preliminary interim guidance, the USPTO’s allowance rate in some art units remain low.

On this two-year anniversary of Alice, this Bloomberg BNA program presents the results of an empirical analysis of those US patents that the USPTO initially rejected under Alice, but then subsequently granted in spite of Alice.  What types of claim amendments and arguments did the USPTO find to be effective to overcome Alice?

Attendees will leave the program with materials that will serve as a template and quick reference guide for effectively responding to Alice rejections.

Educational Objectives: 
• What can companies learn by analyzing the types of software and business method inventions the USPTO has allowed as patent eligible under Alice?
• Which Art Units at the USPTO have been most strict (or lenient) with Alice rejections?
• In-house practitioners and outside counsel will leave this program with a template and quick reference guide for effectively responding to Alice rejections in Technology Center (TC) 3600.

Who would benefit most from attending this program?

Software and internet technology companies, their in-house counsel, and outside counsel serving technology clients.  Any inventor facing a 35 U.S.C. § 101 rejection under Alice would benefit from attending this program.



Professor Michael Risch joined the Villanova faculty in 2010 from the West Virginia University College of Law, where he directed the Entrepreneurship, Innovation and Law Program.  Prior to joining the West Virginia faculty, he served as an Olin Fellow in Law at Stanford Law School.  

Professor Risch’s teaching and scholarship focus on intellectual property and internet law, with an emphasis on patents, trade secrets and information access.  His articles have been published in the Stanford Law Review and Duke Law Journal, among others; online in the Yale Law Journal Online and PENNumbra; and less formally at the Written Description Madisonian, Prawfsblawg Faculty Lounge, and Patently-O blogs.

Professor Risch has published numerous articles (in addition to blog posts) related to patentable subject matter, including: Everything is Patentable, Forward to the Past, Life After Bilski, A Surprisingly Useful Requirement and Nothing is Patentable.  Two of these articles were cited by the United States Supreme Court.

Professor Risch received his A.B. with honors and distinction in Public Policy and with distinction in Quantitative Economics from Stanford University, and his J.D. with high honors from the University of Chicago Law School.  Prior to entering academia, he was a partner at intellectual property boutique Russo & Halle LLP in Palo Alto, California.


Mr. Ivan Kirchev is the IP Sales and Licensing Business Strategy Manager with Hewlett Packard Enterprise.  He is a registered U.S. Patent Attorney with a wide variety of intellectual property experience, including patent development and portfolio management, analysis and monetization of intellectual property, patent sales, licensing and divestiture, software licensing, software open source, tech transfer, and opinion work.  He is a member of the Hewlett Packard Enterprise Intellectual Property Sales and Licensing group responsible for monetizing HPE’s intellectual property by executing all activities around identifying, analyzing, and closing various IP related deals, software licensing, tech transfers and other business transactions involving HPE IP rights.  He was previously Patent Counsel and Portfolio Manager for the Software and Analytics Lab in Hewlett Packard Labs, and before that he was an Intellectual Property attorney with Michael Best & Friedrich LLP.

Mr. Kirchev earned his J.D. from Loyola University Chicago School of Law and his B.S. in Computer Information Systems from the Illinois Institute of Technology.


Mr. Aseet Patel concentrates on patent prosecution and litigation matters primarily in the electrical, computer and business method arts.  He also provides opinion counseling services to clients, including various types of clearance opinions on patents.

At Banner & Witcoff, Mr. Patel has been preparing and prosecuting patent applications for many years in a variety of technology areas, including those relating to electronic circuits, computer hardware and networks, cellular telephones, Internet and e-commerce, business methods, semiconductor processing, and medical devices.  Mr. Patel also has substantial litigation experience. He has represented clients in all aspects of litigation, including pre-trial discovery, witness preparation, depositions, and trial. While representing a major set-top box manufacturer in a multi-patent infringement suit, Mr. Patel used his software expertise to analyze source code in several different programming languages to assess infringement and assisted at the depositions of technology-savvy witnesses. Mr. Patel has also prepared witnesses and exhibits for trial and drafted various court documents.

Mr. Patel is admitted to practice in Illinois, the U.S. Patent and Trademark Office, and the U.S. Circuit Court of Appeals for the Federal Circuit.  He earned his J.D. from Loyola University and his B.S. from the University of Illinois.