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 supervising a network of law firms conducting patent evaluations in 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.
Bob has been a speaker and panelist at many conferences, including:
- “USPTO Subject Matter Eligibility Guidelines,” USPTO Patent Subject Matter Eligibility Roundtable, November 14, 2016, Alexandria, Virginia.
- “Software and Section 101: Finding Your Way Through Turbulence,” Intellectual Property Owners Association, October 19, 2016.
- “Center of the Protection of Intellectual Property: Summer Institute," Center for the Protection of Intellectual Property, August 3-4, 2016, Snolqualmie, WA.
- “Update on Federal Circuit 101 Cases,” AIPLA, July 20, 2016.
- “Updates From the Front: Electronics/Software,” AIPLA Spring Meeting, May 18, 2016, Minneapolis, MN.
- "The Patent Expert Is in: An Afternoon with Robert Sachs on Hot Topics in Patent Law," Santa Clara Bar Association, April 28, 2016.
- "Patentability of Software Patents: Emerging Strategies for Attorneys in 2016," Knowledge Group, February 4, 2016.
- "Software and Business Method Patent Strategy Post-Alice," Law Seminars INternational, January 20, 2016.
- "The Business Impact of the Developing Section 101 Jurisprudence," Stanford Graduate School of Business, January 12, 2016, Stanford, CA.
- Reed Tech Global IP Meeting, Reed Tech, January 11, 2016.
- “Analysis of USPTO’s Interim Guidance,” AIPLA Spring Meeting, April 30, 2015, Los Angeles, CA.
- “Patentability of Software Patents: Emerging Strategies for Attorneys in 2015,” Knowledge Group Webcast, February 10, 2015.
- “USPTO’s Interim Eligibility Guidance: 4 Observations + 1 Story,” USPTO Patent Eligibility Forum, January 21, 2015 USPTO, Arlington, VA.
- “Patent-Eligible Subject Matter: A Walk Through the Jurisprudential Morass of § 101,” Practicing Law Institute 7th Annual Patent Law Institute, March 18-19, 2013, San Francisco, CA
- The Federalist Society, "Boon or Bane for Technological Innovation?: Software Patents," November 6, 2012
- Critical Debrief: “The Patentability of Ideas: The Impact of Prometheus," July 24, 2012, Washington D.C.
- Palo Alto Bar Association, “Punishing Prometheus: The Supreme Court’s Destruction of Patent Value,” May 8, 2012, Palo Alto, CA
- Licensing Executive Society, World IP Day: Around the World with LES, "Philosophy, The Patent Law, and Innovation," April 26, 2012, USPTO, Alexandria, VA
- Berkeley Center for Law and Technology, 12th Annual Silicon Valley Advanced Patent Law Institute, "Patentable Subject Matter: The Ongoing Saga of Section 101," December 8-9, 2011, Palo Alto, CA
- Practicing Law Institute, "CyberSource, Classen and Ultramercial: What it means for Software Patents," October 24, 2011
- 2011 Congress on Patent Strategies for the Financial Services Industry, "Bilski vs. Kappos: How Bilski Changes the Law of Patentable Subject Matter, and its Effect on Present and Future Patent Programs, and Effective Patent Strategies," September 19-20, 2011, New York, NY
- U.S. District Court, Northern District of California, Magistrate Judges Retreat, "The Art and Science of Patent Prosecution," September 7, 2011, Moss Beach, CA
- Eighth Annual Stanford E-Commerce Best Practices Conference, "E-Commerce Patents: Patent Marketplace to Patent Litigation," June 24, 2011, Stanford Law School, Stanford, CA
- American Intellectual Property Law Association, 2011 Spring Meeting, "Philosophy and Patents," May 12-14, 2011, San Francisco, CA
- Churchill Club Great Debate: Should Software Be Patentable?, Fenwick & West LLP, Mountain View, CA, February 16, 2011
- USPTO's 2010 Business Methods Partnership Meeting, "No Longer Business as Usual: Bilski v. Kappos and the Future of Patentable Subject Matter," United States Patent & Trademark Office, September 23, 2010.
- Seventh Annual Stanford Ecommerce Best Practices Conference, Stanford Law School, June 25, 2010.
- Bilski Amicus Roundtable, Fenwick & West LLP, Mountain View, CA, July 10, 2009.
- Sixth Annual Stanford Ecommerce Best Practices Conference, Stanford Law School, June 12, 2009.
- Licensing Executive Society 2009 Winter Meeting, "Patent Pools: Still Relevant After All These Years," San Antonio Texas, February 26, 2009.
- Santa Clara Computer & High Technology Law Journal 2009 Symposium, Shifting Strategies in Patent Law, Santa Clara Law School, January 30, 2009.
- Mobile TV & Video Summit at NAB2007, "Strategic Legal Considerations for MoTV Businesses," Las Vegas, Nevada, April 17, 2007.
- Software IP Strategy Summit, "Strategies for Claim Drafting for Business Method and Financial Patents," Palo Alto, California, February 20, 2007.
- Business Method Patents in the United States, at Patent Law Year in Review: 2006, Palo Alto, California, January 19, 2007
Bob is the author of several articles on patent strategy, including:
“REBUTTAL: Busting The Myth Of Unlimited RCEs,” By Robert R. Sachs, Law360, December 2, 2016.
“Alice Turns 2: A Survey Of The Impact Of A 'Minor Case,'” By Robert R. Sachs, Law360, June 17, 2016.
“Security Expert’s IP Raises Issues,” By Robert R. Sachs, EE Times, August, 18, 2014.
“Alice on Software Patents: Preemption and Abstract Ideas,” By Robert R. Sachs, IP Watchdog, June 29, 2014.
“Alice, the Illusory Death of Software Patents,” By Robert R. Sachs, IP Watchdog, June 27, 2014.
“Viewpoint: Supreme Court Should Set Objective Test for Software Patents,” By Robert R. Sachs and Daniel R. Brownstone, The Recorder, February 21, 2014.
“Patent Eligibility: Recent Trends, Issues, and Strategies,” By Robert R. Sachs, Inside the Minds: The Impact of Recent Patent Law Cases and Developments, 2013 ed.
- “The Battle Rages On: A Report from the Front Line of the Patentable Subject Matter War,” by Robert R. Sachs, The Intellectual Property Strategist, September 2012
- “Patentable Subject Matter After Bilski,” by Robert R. Sachs and Puneet Sarna, The Intellectual Property Strategist, April 2012
- Punishing Prometheus: Part V - The Long Punt and the Improbable Return, by Robert Sachs. Patently-O, Apr. 2012.
- Punishing Prometheus: Part IV - Machine or Transformation, We Hardly Knew Thee, by Robert Sachs. Patently-O, Mar. 2012
- Punishing Prometheus: Part III - Conclusions Masquerading as Analysis, by Robert Sachs. Patently-O, Mar. 2012.
- Punishing Prometheus: Part II - What is a Claim?, by Robert Sachs. Patently-O, Mar. 2012.
- Punishing Prometheus: Part I - The Supreme Court’s Blunders in Mayo v. Prometheus, by Robert Sachs. Patently-O, Mar. 2012.
- The Supreme Court's Bad Precedent for Innovation, by Robert Sachs. Xconomy, Mar. 2012.
- "Making Sense of the Revived Machine-or-Transformation Test in In re Bilski," by Robert Sachs & Robert Hulse. IP & Technology Law Journal, Jan. 2009.
- On Shaky Ground: The (Near) Future of Patents After Bilski, by Robert Sachs & Robert Hulse. The Intellectual Property Strategist, Vol. 15, No. 3, Dec. 2008.
- Lessons in Patent Prosecution Quality Control from the Federal Circuit, on the implications of the Federal Circuit's decision in Microsoft Corp. v. Multi-Tech Systems on how patents are prosecuted. Fenwick & West IP Bulletin, July, 2004.
- Strategic Use of Continuing Applications, on using continuing applications to expand a patent portfolio for licensing, litigation, and competitive advantage.
- Strategic Patent Due Diligence, on how to assess patent portfolios during mergers and acquisitions. E-Commerce Lay Journal, vol. 2. no. 3, February, 2002.
- A Framework for Identifying Inventions Worth Patenting, on using competitive advantage based analysis to select inventions for patenting.
- "Method Madness" on patenting financial inventions in light of the Federal Circuit decision in State Street Bank.
- "Global Warning: The Internet's International Nature Presents Complex Patent Problems," on problems in patenting inventions relating to the Internet and E-commerce
- "Software Support & Analyzing the PTO's Guidelines for Computer Implemented Inventions," analyzing the PTO's 1996 guidelines for examining software patents.
- Created patent strategy for one of the early Internet music download websites, for which primary patent on system architecture sold for $7 million
- Patented fundamental mutual fund model of age-based lifecycle mutual funds for a leading financial service company, now a $110 billion market
- Patented demand forecasting models for private software firm, used by several multinational retailers and fast food chains
- Negotiated patent license with world's largest software and computer company, resulting in savings to client in excess of $5 million in royalties
- Created patent strategy for leading casino and hotel management company, including prosecution of strategic patents on player tracking systems
Computers and Communications
- Business Demand Projection System And Method (5,459,656)
- Cash flow optimization using a genetic algorithm (7124105)
- Client-Server Online Payroll Processing (6,411,938)
- Customer valuation in a resource price manager (7212978)
- Dynamic market equilibrium management system, process and article of manufacture (7107230)
- Integrated system and method for analyzing derivative securities (5692233)
- Investment Fund Management Method And System With Dynamic Risk Adjusted Allocation Of Assets (5,812,987)
- Investment Fund Management Method and System (6,336,102)
- On-line group-buying sale with increased value system and method (7194427)
- Personal online banking with integrated online statement and checkbook user interface (5903881)
- Product Demand System And Method (5,299,115)
- Report generation system and method (5423033)
- System and method for determination of incremental value at risk for securities trading (5819237)
- Watershed method for controlling cash flow mapping in value at risk determination (6122623)
Predictive Modeling and Solutions