close

Software & Business Method Patent Strategy Post-Alice

The 2014 Supreme Court ruling in Alice Corp. v. CLS Bank Int'l created a great measure of uncertainty in the law of patentability, especially as regards software and computer-implemented business methods. In the wake of Alice, the district courts and Federal Circuit have invalidated the vast majority of patents brought before them under Section 101. Commentators have called Alice's jurisprudential progeny "draconian.

In the post-Alice world, patent attorneys have only nebulous standards to guide them: is the claim directed to an abstract idea or does it merely involve one? What makes a business practice "fundamental"? What counts as "significantly more" than the abstract idea? What aspects of a computer implementation can supply an "inventive concept"? Can the process can performed using "pen and paper," and why does that even matter?

In light of Alice, in December 2014 the USPTO issued an Interim Guidance on Subject Matter Eligibility, which it updated in July 2015. The PTO also released examples of patent-eligible and ineligible claims. Unable to provide its own definition to clarify the meaning of​ "abstract idea," the PTO directs attorneys and patent examiners to view patent claims in terms of their similarity to court-invalidated patents. How to keep up? The solution: Learn about the recent proliferation of patent-invalidation cases and resulting strategies from the best attorneys in the field.

What You Will Learn

  • What can the USPTO examples tell us about the definition of "abstract"?
  • What gray areas do the PTO's examples leave?
  • What qualifies as "significantly more" than an abstract idea? 
  • Strengthening your application
  • Practical tips for defending your patent
  • What invalidation trends are we seeing at the district courts? The Federal Circuit?