The concrete road to solid patents

Concepts deemed ‘abstract’ might be at risk of being invalid, patent lawyers say
January 27, 2017

As published in the Jan. 27, 2017 edition of the Denver Business Journal
By Monica Mendoza
Photo: Kathleen Lavine
Caption: Kirstin Stoll-DeBell, Kathleen
Ott and Timothy Scull are patent attorneys and partners of Merchant & Gould.

If you are a software inventor, you should probably get to know Alice.

Alice may give you a road map to a patent — or it could be a roadblock.

Either way, patent attorneys across the country are all talking about Alice.

So say the patent attorneys at law firm Merchant & Gould’s Denver office, which specializes in patent law. The office’s 16 attorneys are patent lawyers, meaning they have science and law degrees.

Four partners from the firm recently talked with the Denver Business Journal about what’s on the innovation horizon in 2017. And when it comes to software inventions, all roads lead back to Alice.

Alice is shorthand for a 2014 landmark U.S. Supreme Court case, Alice Corp. v. CLS Bank International. The case shaped patent law and it set a new series of guidelines from the U.S. Patent and Trademark Office on abstract ideas.

Alice Corp. wanted a patent on a computerized system for limiting the risk of one party in a financial transaction. The court said it was not patentable because it was abstract.

According to the National Law Review, since the federal court and U.S. Supreme Court rulings were delivered in Alice, some issued patents may be vulnerable to being deemed invalid. Specifically, patents related to software and business methods are being labeled as “abstract ideas” and therefore constitute patent-ineligible subject matter under Alice, according to the National Law Review article.

But it’s not a death knell for software inventors. It does mean that inventors need to drill down into the claimed invention to get to the technology connection, said Timothy Scull, a partner at Merchant & Gould.

“There has been a shift,” he said. “There are a lot of patents out there that I would say will probably not survive if they are challenged under this framework.”

But it’s complicated.

“[The Alice case] discussed at a level whether a patent should be valid if its claiming something referred to as an abstract idea or is it more concrete,” Scull said. “The more concrete it is, the better chance you have to get a patent and one that will survive scrutiny up to the highest level.”

So what does it mean for software inventors?

Inventors should stay focused on whether technical problems had to be solved instead of business process improvements, said George Lewis, partner at the firm.

“The reality is that everything in our lives now has a general-purpose computer chip and it’s run by software, which means that every product being made essentially has software at the heart of it controlling what it does,” Lewis said.

It can still take three to five years to get a patent on software, said Kathleen Ott, another partner at Merchant & Gould. That means an inventor shouldn’t tell anyone, except their lawyer.

In 2013, the law changed to give preference to those who are first to file a patent application, not necessarily those who conceived the idea first.

“Inventors have a tendency to want it to be perfect and work on it forever,” Ott said. “File sooner than later. Get yourself protected. It may not be perfect. But get that line in the sand established and continue to develop.”

Monica Mendoza covers banking and financial services, legal services, retail, the economy and economic development, and sports business. Phone: 303-803-9230.

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