5 Tips for Getting Software Patents Approved Post-Alice

September 02, 2014

​Fenwick & West intellectual property partner Robert Sachs was quoted by Law360 regarding the U.S. Supreme Court's June decision in Alice Corp. v. CLS Bank, which invalidated Alice Corp.’s patents on computerized risk reduction in financial trading.

Taking abstract ideas or other "building blocks of human ingenuity" and envisioning their implementation on general-use computers does not make those ideas patentable, the court held.

"You need to claim a particular way of doing something on a computer, not every way of doing it with a computer," Sachs said.

Sachs encouraged patent applicants to be willing to “fight the good fight” through appeals to the Federal Circuit when technically specific patent applications are rejected.

"You have to be prepared to appeal and argue that what you have is not a 'building block of human ingenuity,'" Sachs noted. "Most software patents are nowhere close to that."

Sachs said that there will be a period of "the storm before the calm” as the United States Patent and Trademark Office and lower courts work out their interpretation and implementation of the high court’s newest guidance.

"There are all these things that one can recommend, but we won't know for quite a long time how courts will respond,” Sachs commented. “My guess is that courts will be highly inconsistent in their treatment of patent application in the software-related arts.”

The full article is available through the Law360 website (subscription required).