Patentability of Software Patents: Emerging Strategies for Attorneys in 2016
In following the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International, it would seem blatantly obvious that mere abstract ideas are ineligible for registration as software patents.
Conforming to 'Alice test', in July 2015, the Federal Circuit court deemed two patents owned by Intellectual Ventures, invalid in the case of Intellectual Ventures I LLC et al. v. Capital One NA. One patent was for a budgeting application and the other for the design of web pages for advertising. One patent was even named 'Administration of Financial Accounts'.
However obvious, it is difficult to take the court ruling at face value where it tried to distinguish DDR Holdings. In addition, business methods routinely are viewed as ineligible for patenting.
Patent owners and applicants must acknowledge the irrevocable change brought about by the Alice case. Hence, the trend toward holding of patent ineligibility is unlikely to die down, much less be reversed.
The Knowledge Group has assembled a panel of key thought leaders and practitioners to provide a two-hour, LIVE Webcast entitled Patentability of Software Patents: Emerging Strategies for Attorneys in 2016. The panel of speakers will help the audience understand the important aspects of this significant topic and offer best practices in mitigating risks and ensuring compliance with patent laws.
Key issues that will be covered in this course are:
- Software Patentability Framework
- Unpatentable Subject Matter
- Possible Challenges to Software Patents
- Patent Protection and Restriction
- Potential Lawsuits Against Patent Infringements
- Recent Litigation
- Alice Corporation v CLS Bank International
- Intellectual Ventures v Capital One
- Best Practices
- Regulatory Issues, Risks, and Strategies
Robert R. Sachs, Partner
Fenwick & West LLP
- There has been a dramatic and sustained increase in the rate of Section 101 invalidations after Alice, particularly through early dispositive motions. While business methods patents make up a large fraction of the patents invalidated to date, the courts have invalidated a wide variety of software patents as well in all fields of technology.
- In the USPTO, Section 101 rejections likewise increased dramatically in the software, biotech, and especially business method technology areas. The USPTO’s “Interim Guidance” and “July Update” memoranda are being inconsistently interpreted by patent examiners.
- The patent examiners in the business method art units appear to reject applications at much higher rates than examiners in other areas, even for the same types of technologies. In addition, the methodology used by patent examiners in these art units is at odds with the express language of the Interim Guidance.
- Prosecution strategies should focus less on attempting to convince the examiner that there is no abstract idea, and more on the claim limitations that provide improvements to the technology.
Lewis E. Hudnell, III, Founding Partner
Hudnell Law Group P.C.
- Litigation trends concerning patent eligible subject matter
- Strategies for accused infringers in raising patent eligibility challenges
- Strategies for patent owners in defending against patent eligibility challenges
- Open litigation questions regarding patent eligible subject matter
Dr. Orlando Lopez, Partner
Burns & Levinson LLP
- “Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. "[A]pplication[s]" of such concepts "'to a new and useful end,'" we have said, remain eligible for patent protection. “ Alice, 134 S. Ct. at 2354 (citations omitted)
- The USPTO guidelines cite the following examples for “additional features”:
- Improvements to another technology or technical field; 34
- Improvements to the functioning of the computer itself; 35
- Applying the judicial exception with, or by use of, a particular machine;
- Effecting a transformation or reduction of a particular article to a different state or thing; 37
- Adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application; or
- Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment
- What is required to be “significantly more” or “additional features” that render the claim patentable subject matter is not well defined, there is no present clear guidance from the courts and open to interpretation
- The difference between what is “well understood, routine, conventional” and what is just in the prior art is not defined- possibility of a mix between 101 and 103
- Using the guidelines and within the uncertainties, how do we draft on application so that it has a likelihood of passing the 101 test?
- Defining the problem to be solved
- Pointing out the advantages of the invention (improvements, a new and useful end, improvement to a technology other than the abstract idea)
- Details and examples
Who Should Attend:
- Patent Attorneys
- Patent Consultants
- Software Developers
- IT Heads
- Technology Firms
- Other Related/Interested Professionals or Organizations
Robert Sachs concentrates his practice on strategic patent counseling and prosecution for software technologies. Bob has extensive experience in developing patent portfolios for companies of all sizes, from startups to multi-nationals.
He is the primary evaluator for standards essential patents on today's most important audio, video, and communications technologies, including 3GPP-LTE, IEEE 802.11, MPEG-4 AAC, DVB-MHP, OCAP, Digital Radio Mondiale, AMR-NB, AMR-WB, AMR-WB+, G.711, G.729, AGORA-C, and NFC-IP. He conducts and supervises patent evaluations in US, as well as Europe, Japan, China, South Korea, Mexico and Canada.
One of Bob’s areas of expertise is patentable subject matter: the question of what kinds of inventions are eligible for patent protection, and particularly whether software and life sciences related inventions are patentable. This issue has become the new battleground in the development of the patent law, with several important cases having been recently decided by the Supreme Court and the Court of Appeals for the Federal Circuit. While most authors and scholars take a results-oriented approach to this question, Bob instead starts with the first principles of creativity and innovation that drive humans to solve functional problems. From that understanding, software and life sciences inventions are squarely in the domain of what the patent law is designed to protect. Follow Bob’s commentary on patent eligibility and related patent issues on Bilski Blog.
Robert Sachs concentrates his practice on strategic patent counseling and prosecution for software technologies. Bob has extensive experience in developing …
Mr. Hudnell is an intellectual property attorney specializing in patent litigation and the founding principal of Hudnell Law Group P.C. He works closely with his clients to understand their business and their needs in order to develop innovative strategies for achieving favorable results in complex, high-stakes patent disputes. Mr. Hudnell’s clients have ranged from individual inventors to major technology companies in the electronics, semiconductor, computer networking, computer software, electronic commerce, and financial services industries. Mr. Hudnell has successfully represented clients in patent trials in federal court and obtained numerous settlements and dismissals of patent lawsuits in favor of his clients. He has also successfully represented clients in post-grant proceedings before the Patent Trial & Appeal Board. Mr. Hudnell also counsels clients on the acquisition and sale of intellectual property rights, monetizing their intellectual assets, and managing patent litigation risk. Mr. Hudnell earned a B.S. in Operations Research and Industrial Engineering from Cornell University and a J.D. from the University of Pennsylvania. He is registered to practice before the United States Patent and Trademark Office.
Mr. Hudnell is an intellectual property attorney specializing in patent litigation and the founding principal of Hudnell Law Group P.C. …
Dr. Orlando Lopez has over twenty five years of experience at various high technology companies, including Polaroid, Data General, Control Data, and Science Applications. He concentrates his practice on helping his clients, which range from individual inventors to large multinational corporations and universities, identify and protect their intellectual property and build their patent portfolios. Dr. Lopez holds a Ph.D. in electrical engineering from the University of Colorado – Boulder, and a J.D., cum laude, from the New England School of Law.
Dr. Orlando Lopez has over twenty five years of experience at various high technology companies, including Polaroid, Data General, Control …
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Specialized Knowledge and Applications
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Areas of Professional Practice
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About Fenwick & West LLP
Fenwick & West provides comprehensive legal services to ground-breaking technology and life sciences companies at every stage of their lifecycle. We craft innovative, cost-effective and practical solutions for established and emerging companies on issues ranging from venture capital, public offerings, M&A and strategic relationships, to intellectual property, litigation and dispute resolution, taxation, antitrust, and employment and labor law. For more than four decades, Fenwick has helped some of the world's most recognized companies become and remain market leaders. For information, visit www.fenwick.com.
About Hudnell Law Group P.C.
Hudnell Law Group is a modern intellectual property law firm committed to innovating, adding value, and delivering results for its clients. Hudnell Law Group offers a full spectrum of intellectual property legal services and develop creative solutions tailored to suit its client’s intellectual needs. Hudnell Law Group employs new and alternative practices designed to enhance the value of its offerings. Hudnell Law Group demonstrates its value by the results it achieves for its clients and its commitment to providing outstanding client service.
About Burns & Levinson LLP
Burns & Levinson is a full-service law firm with over 125 attorneys based in Boston, with additional offices in Providence and New York, as well as in the Merrimack Valley/North Shore, Metrowest and South Shore areas of Massachusetts. The firm has grown steadily and strategically throughout the years and has become a premier law firm with regional, national and international clientele. The firm has expertise in corporate law, finance, venture capital, private equity, intellectual property, labor and employment, tax, bankruptcy, lending and leasing, real estate, design & construction, environmental, business litigation, government investigations and white collar crime defense, and a large private client group, including estate planning, probate and trust litigation, divorce and other family law issues. In addition, the firm has a wholly owned subsidiary office in Montreal, Quebec, to service its Canadian clients. For more information, visit Burns & Levinson at www.burnslev.com.