Brad Frazer with Phil McKay and Allison Parker,
The Daily Record Newswire
I never understood that expression, “The King is dead! Long live the King!” until I started watching Game of Thrones. So when horrible King Joffrey Baratheon was poisoned and the assembled onlookers turned to his younger brother and shouted those words, I got it: we acknowledge that King Joffrey is dead, but his younger brother Tommen is the new king automatically by virtue of the doctrine of primogeniture and so we wish him, the new king, long life by that expression. (Most of you likely understood this long before I did.)
Because of a recent U. S. Supreme Court decision called Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014), many people have been lamenting the death of software patents. But in fact, the correct expression now should be a modification of the “king” declaration above: “Software Patents are Dead! Long Live Software Patents!”
The full and somewhat tortured history of software patents (a subcategory within the more accurate general term “business method patents”) is beyond the scope of this article, but suffice it to say that before the Alice case, a skilled patent practitioner would be able in many cases to obtain patent protection on (a) a non-software business method, (b) the functionality described by software running on a computer to implement the business method, or (c) both. As a result there are many thousands of issued patents in the United States on business methods, many of which also cover the software functionality needed to implement that business method (and thus, they are called “software patents”). But in Alice, the Supreme Court held that the “software patents” at issue were invalid because the claims were drawn to an abstract idea, and implementing those claims on a computer was not enough to transform that idea into patentable subject matter. By United States law, you cannot get a patent on an “abstract idea.”
The post-Alice fallout has been interesting to watch, with some commentators calling it the death-knell for software patents. But in reality, the case calls to mind the death of King Joffrey while (new) King Tommen waits in the wings. It is certainly true that pure business method patents (e.g., a new process for advertising real estate that does not need a computer or software) are much more difficult to obtain in a post-Alice world. It is also undeniable that some software patents (e.g., the server software that runs the aforementioned advertising method) are more difficult to obtain in a post-Alice world. Nonetheless, the Alice opinion itself and subsequent guidance from the United States Patent and Trademark Office teach that obtaining patents on software is still possible—but must be correctly approached.
Probably the most significant long-term change that will result from the Alice decision is the universal recognition that software patents require the skill of an experienced software patent practitioner. Prior to Alice, non-software specialized patent attorneys routinely took on software work and then treated the applications like any other business method patent application; if anything is clear from the Alice decision, those days are over. In the post-Alice world, just as an informed inventor would not go to a patent attorney whose experience was limited to integrated circuit design to prepare a patent for a cancer medication, the well-informed inventor will not take her software-related invention to a patent practitioner whose experience is limited to mechanical devices or hardware systems. In short, post-Alice, if you are seeking a software-related patent, you must have a software-qualified patent attorney on your side.
So, what do you do if you have an idea for a new invention that involves, or is implemented, in software? Here is a list of suggested best practices:
• Make no public disclosures about your software invention, or any invention, without a signed non-disclosure agreement in place or a patent application on file.
• Do not publically use your software invention, or any invention, before filing your patent application. This applies whether the public can actually see the invention or even realize that it is in use, e.g., just because the software is doing its thing on the backend, or is otherwise not visible, you may still encounter a public-use problem, so long as the software was deployed the way the software would normally be deployed.
• Do not offer to sell the software invention, even if not fully developed or implemented, without a signed non-disclosure agreement in place or a patent application on file.
• Remember that in the United States, if you made an unprotected public disclosure or public use of the invention more than one year ago, you cannot get a patent on the functionality or system that was disclosed. To make matters worse, in most foreign countries, you cannot get a patent at all if there has been any public disclosure or public use before an effective patent application filing date.
• Before hiring her, ask your patent attorney how many software patents she has prosecuted to ISSUANCE, and particularly how many since July of 2014, the date of the Alice decision.
• Remember that obtaining a patent on business methods alone, without a showing of something more that adds to a technical field, or solves a stated specific technical problem, in a novel way is very difficult, if not impossible. Please remember this as you are engineering your new business method inventions.
• Investors and buyers who are performing due diligence on your company and your invention are going to want to see copies of your patent applications, so care should be taken to choose a path that results in the highest odds of the application issuing as a patent.
So the next time you hear or read that software patents are dead because of Alice, think of young King Tommen and remember that a good experienced software patent attorney can still do much to obtain patent protection for your software-based inventions.
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Hawley Troxell partner Brad Frazer, with contributions from Hawley Troxell Patent Group Chair Phil McKay and patent attorney Allison Parker.
