Software Patents Post-Alice: Where Are We Now
Since its enactment last 2014, the Supreme Court's Alice decision has continuously raised the bar for patent eligibility. Software innovation went up and it has significantly altered the patentability of software, business methods, and e-commerce technologies. In addition, software patent litigations have also changed dramatically.
With its range, it is expected that the Alice decision will continue to affect software patent eligibility and litigation. While it is currently improbable that the US Supreme Court will supersede its unanimous opinion, Congress has been actively considering legislation to overrule Alice. If passed, however, such legislation will still significantly impact software patent litigation.
In a LIVE Webcast, a seasoned panel of thought leaders and professionals brought together by The Knowledge Group will provide the audience with an in-depth analysis of the recent developments of software patents post-Alice. Speakers will offer an overview of the current implications and status of software patents after Alice. They will also present effective practices and strategies to overcome the general aftermath of the decision as well as what lies ahead of this evolving area of law.
- Software Patents Post-Alice – A Lookback
- Most Notable Changes and Implications
- Current Status of Software Patents after Alice
- Potential Risks, Issues, and Challenges
- Best Practices and Strategies
- What Lies Ahead
James J. DeCarlo, Shareholder
Greenberg Traurig LLP
- Overview of Alice Case Law
- Guidance to Take From Key Federal Circuit Decisions
- Current State of Appellate Review
- How to Navigate the Latest Case Currents
Orlando Lopez, Partner
Culhane Meadows Haughian & Walsh PLLC
- The state of “Patentable subject matter”- USPTO patent examination outcomes, PTAB decisions, Board decisions
- Case most often used- or cited- Electric Power (see SAP America v. Investpic, citing Electric Power)
- What the cases and PTAB decisions imply in terms of drafting claims and specification
- Use of the suggestion for drafting claims and specification in District Court
Gene M. Garner II, Partner
Staas & Halsey LLP
- Patentability of computer software relies on Alice/Mayo test of whether a claim integrates the software into a practical application or recites significantly more
- Detectability of infringement should also be considered
- Consider how to draft claims to a single infringer in distributed computing such as the cloud
- Computer software is involved in many industries
Who Should Attend:
- Patent Lawyers and Consultants
- Corporate Counsel
- Chief Technology Officers
- Chief Information Officers
- Technology Firms
- Software Companies
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.
A registered patent attorney and electrical engineer, Jim DeCarlo is actively involved in virtually all aspects of intellectual property counseling. …
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.
Dr. Orlando Lopez concentrates on helping his clients, which range from individual inventors to large multinational corporations and universities, identify …
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.
Gene M. Garner II is a partner with the Washington, D.C. law firm of Staas & Halsey LLP. He is …
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About Staas & Halsey LLP
Specializing exclusively in intellectual property, Staas & Halsey LLP brings together technical and legal expertise in our commitment to provide quality legal representation. Since 1971, we have provided clients with technical expertise and intellectual property protection. In today’s fast-paced, competitive, and complex world, the field of intellectual property is more important than ever. We’re proud to have played a role in the development of today’s technologies and are excited about our work on the technologies of tomorrow. In the four decades the firm has been in business, we have seen incredible leaps in technological advancement, changes in the dynamic world of intellectual property law, and the creation of a truly global economy. The world has changed, and Staas & Halsey has changed with it, but our goal has always remained the same: serving our clients technical and legal needs with speed and experience, in the most cost-effective, professional manner possible.
About Greenberg Traurig LLP
Greenberg Traurig, LLP (GT) has approximately 2200 attorneys in 40 locations in the United States, Latin America, Europe, Asia, and the Middle East. With more than 210 intellectual property attorneys and agents in the United States, Asia, and Europe, GT provides a broad range of patent, trademark and copyright protection and strategic counseling. GT was named “Law Firm of the Year” for Trademark Law and a “National Tier 1” Law Firm for IP Litigation, Patent Law and Litigation, Copyright Law, and Technology Law by U.S. News and Best Lawyers, 2020 “Best Law Firms." Web: www.gtlaw.com Twitter: @GT_Law
About Culhane Meadows Haughian & Walsh PLLC
Established in 2013, Culhane Meadows has grown from a partnership of four former BigLaw attorneys to a firm of over 70 partners in 11 business markets serving a global roster of clients. Its Disruptive Law® business model ensures clients, from Fortune 1000 corporations to emerging companies across industry sectors, enjoy exceptional and highly-efficient legal services from highly experienced, partner-level attorneys. Now the largest, national, WBE-certified, general practice law firm, Culhane Meadows and its attorneys have been recognized for excellence and innovation by Best Lawyer, Super Lawyer Magazine, LAW.COM, Working Mother and US News & World Report, among others. The firm is a proud member of NAMWOLF, the National Association of Minority and Woman Owned Law Firms.