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Analysis: Supreme Court shifts the patent landscape for software, other business methods


By David Schwartz
Published: July 30th, 2014

The patent landscape may be only slightly altered in the wake of the Supreme Court’s decision in Alice Corp. v. CLS Bank, but it’s been altered in fairly significant ways, according to several IP attorney experts interviewed by Technology Transfer Tactics. What’s patentable remains largely the same, but the ruling did offer some important clarity on the critical issue of subject matter eligibility, and how claims are drafted may need to change, the attorneys say.

“Patent attorneys and TTOs instinctually try to reduce an idea to its heart and file a claim based on that to minimize the risk of design-arounds,” explains A.J. Tibbetts, a patent attorney in the Electrical and Computer Technologies Practice Group at Wolf Greenfield, Boston. “That tactic is still valuable, but needs to be balanced against the risk that it will abstract the invention so much that a court will label it an impermissible ‘abstract idea.’”

And Ronald I. Eisenstein, a partner at Nixon Peabody, also in Boston, notes that more detail and effort in drafting will now be necessary. “Including more and narrower claims will help,” he says, “which goes against what the USPTO has been asking for in trying to limit the number of claims.” He suggests that crafting patent applications that are in line with the European Patent Convention’s “problem/solution method” for assessing the presence of an inventive step “will be more of a help than a problem.”

The bottom line? If you weren’t already, advises Philip G. Semprevio II,JD, CLP, a licensing associate in the Emory University Office of Technology Transfer, Atlanta, you should “direct claims to the aspects that improve art and provide inventive concepts, not merely abstract ideas executed in computer medium.” That adjustment may have already been made by many TTOs in the U.S., in part because the ruling “more closely aligns the U.S. with the international Patent Cooperation Treaty’s rules on software.” His colleague

For now, that ruling and follow-up guidance mean this for TTOs: “Review new software and business methods to identify whether an invention is merely a computer implementation of a well-known algorithm or process,” advises Molly S. Lawson, a partner at Michael Best & Friedrich LLP, Milwaukee. If it is, she adds, “TTOs should consider whether there are any aspects of the invention that improve the functionality of the computer — such as increase its speed or reliability — or the previous implementations of the algorithm or process.” If so, consider documenting the improvements in the detailed description of the patent application and draft claims that focus on the improvements.

“TTOs should also consider drafting claims relating to software and business methods with a more application-specific focus,” she says, such as the specific interfaces created using the software, the other software or hardware components that the computer interacts with, or specific interactions with users. A detailed analysis of the Alice Corp. ruling appears in the July issue of Technology Transfer Tactics. To subscribe and access the full article, as well as the publication’s subscriber-only eight-year archive of best practices and success strategies for TTOs, CLICK HERE

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