Software Patents Post-Alice: Where Are We Now

A registered patent attorney and electrical engineer, Jim DeCarlo is actively involved in virtually all aspects of intellectual property counseling. Jim started his career in the computer industry, and since transitioning to law has spent over 25 years litigating, licensing and procuring patents in the software, hardware, internet and networking spaces, among many others. Jim’s experience includes litigating patent matters in District Courts around the country, handling matters before the PTAB, counseling clients on the strategic use and management of intellectual property assets, and drafting infringement, validity and freedom to operate opinions.  He counsels clients on the drafting and negotiating of complex technology agreements and directs the prosecution of patent applications around the world, all from the perspective of how the asset will stand up in litigation. Jim is also a frequent lecturer and author on a variety of patent law topics, particularly software patents.

Jim’s clients in the US and abroad range from start-ups with one or two key patents to giants with thousands of patents worldwide. He also maintains strategic relations with the USPTO, and has conducted hundreds of personal interviews with US Patent Examiners to more rapidly move his clients’ cases to allowance.

Dr. Orlando Lopez concentrates 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. Orlando has over twenty five years of experience at various high technology companies, including Polaroid, Data General, Control Data, and Science Applications, as a technical manager, program manager, engineer and researcher. His experience spans from managing product design projects, managing complex research teams involving software, IC design, optics, mechanics and electronics to being an active researcher in areas from magnetic and optical recording and electromagnetic effects to imaging science.

He has drafted and prosecuted over 300 U.S. patent applications in diverse areas of technology such as nanotechnology, optics, quantum cryptography, software, machine learning (AI), business methods, software, telecommunications, wireless applications, electronic imaging, mechanical and physical devices. He Co-authored an amicus brief that was submitted to U.S. Supreme Court for Bilski vs. Kappos, a patentable subject matter case.

Gene M. Garner II is a partner with the Washington, D.C. law firm of Staas & Halsey LLP.  He is experienced in patent preparation and prosecution in computer hardware and software, electronic commerce, networking and telecommunications, computer graphics, medical equipment, data storage, semiconductors and testing equipment, image forming apparatuses, and home appliances.  In addition, he has prepared and presented patentability, validity, and infringement studies in the electrical and mechanical arts.

Mr. Garner has presented seminars and lectures on intellectual property topics around the world to corporate groups, professional organizations, and university-sponsored conferences.

In addition to his law degree from the University of Maryland, Mr. Garner holds Master’s degrees in electrical engineering from Cornell University and in biotechnology from Johns Hopkins University.  He also holds a Bachelor of Science degree in electrical engineering from the University of Maryland.