Michael Shepherd Quoted in Law360 Article, "4 Ways To Boost Odds Of Getting An Alice Rejection Reversed"


Michael Shepherd, Principal, was quoted in Law360’s article “4 Ways to Boost Odds of Getting An Alice Rejection Reversed” on April 4, 2018.

“Those daunting figures may make some applicants wonder whether appealing to the board is worth it when the examiner finds the claims ineligible under Section 101 of the Patent Act. In many cases, the applicant may be better off trying to work with the examiner to get a patent rather than appealing, but the PTAB’s limited number of reversals show that some arguments can sway the board,” said Michael Shepherd

“The stats are pretty bleak, but the board has more power to allow claims under 101 than the examiner does,” Shepherd said, adding that the key to success is that “you want to make sure you’re in a position to have a persuasive argument.”

Since the cases now on appeal involve applications written years ago, often before Alice was decided, that may not be the case. If the written description of the patent doesn’t say anything about a technological improvement, “that’s a bad place to be in,” He said.

“No amount of attorney argument will persuade the board that the invention is a patent-eligible improvement in computer technology if that isn’t apparent in the patent.”

“That’s why 101 rejections are frustrating to attorneys. Sometimes it doesn’t matter how good a lawyer you are,” Shepherd said. “If it’s not in the specification, you’re going to have a hard time.”

“Appeals can be time-consuming and costly, and the chances of securing a reversal are slim. So if it seems possible from talking to the examiner that there is a way to work together to get the claims allowed, that’s the best course,” Shepherd said, “with appeals reserved for a total impasse.”

“If the examiner says, ‘I don’t know how you’re going to overcome this 101 rejection,’ an appeal is absolutely a good idea,” he said.

To view the full article, please click here.