"Drafting for Alice in 2017: Trends and Best Practices," Panelist, Reed Tech Webinar, January 2017.

Today most computer innovations relate to software, at least in some important ways. That software lies at the very core of much computer related innovation creates an enormous challenges for patent attorneys and innovators. It is the software that directs the computer, or more generally a machine, to do unique and often wonderful things. In recent years, however, the patentability of software has been fundamentally called into question.

At least some patents continue to issue covering software related inventions each week by the United States Patent and Trademark Office, and no one seriously believes software will become patent ineligible per se. But software patents are difficult to obtain, and in some Art Units they are extremely difficult if not nearly impossible to obtain.

For now, there has been no definitive statement by the Supreme Court that software is, in fact, patent eligible, although the Court has recognized at least one some software related innovation as being patent eligible. See Diamond v. Diehr. Unfortunately, much of the Supreme Court’s ruling in Diehr was overruled in Mayo v. Prometheus, even though the Supreme Court continues to prefer to operate under the notion that Diehr is still good law. Simply put, Diehr stated directly that there is no place for consideration of novelty when determining patent eligibility, and Mayo said quite the opposite. Therefore, how much of the Supreme Court’s ruling in Diehr remains “good” law remains questionable at best.

Notwithstanding, currently the chief hurdle to the patenting of software is the Supreme Court’s decision in Alice v. CLS Bank, which in conjunction with Mayo delivered the so-called Alice/Mayo framework. The Alice/Mayo framework requires the decision maker, whether a patent examiner, administrative tribunal or reviewing court to ask and answer a series of questions before determining whether the patent claim in question constitutes patent eligible subject matter.

The first question (commonly referred to as Step 1) is whether the patent claim covers an invention from one of the four enumerated categories of invention defined in 35 U.S.C. §101 (i.e., is the invention a process, machine, article of manufacture, or composition of matter). If the answer to this question is no then the patent claim is patent ineligible. If the answer is yes the decision maker must move on to the next inquiry because the statutory test established by Congress is no longer the complete test for patent eligibility in the United States.

The second question (commonly referred to as Step 2A), where the Alice/Mayo framework truly begins, requires the decision maker to ask whether the patent claim seeks to cover one of the three specifically identified judicial exceptions to patent eligibility. Although there is no textual support for the creation of any judicial exceptions to patent eligibility in the Patent Act, the Supreme Court has long legislated from the bench in this area and ignored the clear language of the statute. At the moment there are only three identified judicial exceptions, which are: laws of nature, physical phenomena and abstract ideas. If the claim does NOT implicate one of those judicial exception then the claim is patent eligible.

In the case where the patent claim seeks to cover a judicial exception to patent eligibility, the final question (commonly referred to as Step 2B) asks whether the inventive concept covered in the claimed invention added “significantly more” than the judicial exception, or whether the claimed invention did not add “significantly more” and, therefore, was seeking to merely cover the judicial exception.

The judicial exception at play when computer implemented inventions are claimed is the abstract idea exception. Unfortunately, the Supreme Court has intentionally refused to define the phrase “abstract idea,” pointing out in Alice v. CLS bank that they did not need to “labor” to define the term. Equally unfortunate, the Supreme Court has not defined the meaning of “significantly more.” Thus, the two critical terms of art in the Alice/Mayo framework are have not accepted meaning.

While Alice and the resulting framework test has infused a great deal of uncertainty, there has been good news for patent owners and innovators over the past nine months. Since May 2016, Judges Moore, Taranto, Hughes, Chen, Newman, O’Malley, Reyna, Stoll, Wallach and Plager have all sign on to decisions that found at least some software patent claims to be patent eligible. That brings the total to ten (10) judges of the Federal Circuit indisputably in favor of patent eligibility for software in at least some instances over the last eight months. Not on that list is Judge Linn, a former patent attorney, who has throughout his career has been one of the most forceful defenders of a strong patent system and the author of previous decisions finding software claims patent eligible, including the original panel decision in Alice. Thus, the number of Federal Circuit judges that would find at least some software patent claims to be eligible conservatively sits at eleven (11).

This free webinar discussion on best practices for software patents and predictions for 2017 included Gene Quinn (IPWatchdog) and he was joined by: (1) Kenneth Corsello of IBM, who lead the team responsible for drafting IBM’s recently submitted public comments to the USPTO on 101; and (2) Dr. Kate Gaudry, a patent attorney with Kilpatrick Townsend & Stockton who focuses her practice on patent prosecution and counseling, with an emphasis on software and computer systems.

In addition to your questions, the panel will:

  • Provide an overview of the pro-patent eligibility decisions of the Federal Circuit since May 2016;
  • Discuss what must be included in your software patent applications in order to maximize the likelihood of obtaining a favorable outcome; and
  • Explore where the law seems to be heading and best practices for innovators and their representatives to stay ahead of the curve.

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