Mark Whitaker
American Intellectual Property Law Association

The Supreme Court’s decision three years ago in Alice v CLS Bank reverberated across the US. With case law a clash of conflicting decisions, what sort of future is there for software patents? Mark Whitaker takes a look

In the three years since the Alice decision, how has the software patent landscape changed?

Section 101 of the Patent Act, which sets out subject matter eligibility, is an issue that is raised in every single software patent case. Current interpretations of Section 101 have made it very difficult for software companies to assert their patents, and it has also made it equally difficult for a number of practitioners, patent examiners, patent agents, and the courts to reach any consensus. This is an issue that Congress is focusing on and it needs some clarity. I’m confident they will try to come up with some sort of legislative fix. As we’ve gone through many of these software cases, so many judicial exceptions have been laid out that the landscape has become very convoluted and difficult to manage. The Supreme Court does the best it can to figure out the morass.

But really, the decision belongs with Congress, after conferring with all affected stakeholders, in order to give the courts better guidance.

What sort of case law has developed, is it all clear and concise?

One week we’ll see a decision going one way, and then the next week a decision will go the other. These judicial exceptions are being made up by courts or the involved parties presenting arguments, and currently that is the way issues are being resolved. This is where the real rub is.

How has the case law developed? It is difficult to say whether there has been any actual ‘development’ of the case law. There have been lots of cases, but I hear from practitioners all the time that these inconsistencies are causing major issues. If you’re a litigator, patent agent or a small-shop patent prosecutor, the US Patent and Trademark Office doesn’t have appropriate direction, nor do the courts. There’s just a mess of cases with, in my view, no rhyme or reason at all. There is a lack of direction and it’s up to Congress to bring us reconciliation. The Alice decision moved away from a body of case law that had been developed. The Court’s decisions conflated eligibility under Section 101 with conditions of patentability found in Sections 102, 103, and 112. It was no longer a question of anticipation or obviousness, or whether a particular written description was adequate. We’ve now gone into this world of Section 101 of trying to come up with exceptions that were never intended when the Patent Act was passed in 1952. That’s really the problem. It’s got to go back to Congress.

What can those seeking software patents do to increase their chances?

It’s a contentious area, and because there are so many companies and so much of what we do is dependent on software, there needs to be some kind of carve out that can protect property. If we continue down the current road, we’re not going to have such an innovative economy.

The only advice I can offer is that your counsel should be well versed in the state of the law, has a proven record of getting claims allowed and wins consistently at the district court level. That’s really the best protection for now, until we can get this mess fixed.

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