Commentary

What Are We Going To Do About ALICE?

Posted on April 21, 2015

As discussed in a previous post, the patent eligibility of inventions is now in doubt following the Supreme Court decision Alice Corp. Pty. Ltd. v. CLS BANK INTERNATIONAL et al.

 

Now, WHAT DO WE DO?

 

Since the ruling in Alice, several courts including the patent appeals court the CAFC (Court of Appeals for the Federal Circuit), have knocked down patents as claiming ineligible subject matter under §101. In particular computer implemented method claims have fared poorly. A method for balancing colors in a system using various print and display devices (Digitech Image Technologies v. Electronics for Imaging, Inc. (July 11 2014), a method for playing bingo using the internet (Planet Bingo v. VKGS LLC (Aug. 26 2014), a method for trading streaming video of TV episodes for watching paid advertising content (Ultramercial v. Hulu) have all been found patent ineligible following Alice.

 

However, there is a path to follow to patent eligible software. The CAFC found a patent eligible computer method in DDR Holdings v. Hotels.com. A couple of points to make.

1. The DDR claims recite many steps.
2. The application included specific source code examples.
3. The claims recite a server and a computer store, each performing many steps.

 

This gets the method (for making a 3rd party website look like a host website allowing one web store to sell items from another website without losing the customer to the other website) out of the “generic computer” style claims that have been cited as the defect in the other examples.

 

The PTO has responded to DDR by adapting example claims and publishing them for practitioners to use as a guide as to how to claim computer related methods as patent subject eligible inventions. See http://www.uspto.gov/patents/law/exam/abstract_idea_examples.pdf

You can still patent software after Alice. Make sure your patent attorney is current and aware of these developments.

 

If you need a patent application for a computer related invention, contact The Courtney Firm.

Alice can be dealt with, she just needs to be understood!

Background Information is available online. Some relevant options include:

http://www.cafc.uscourts.gov/opinions-orders/0/all/digitech

http://www.cafc.uscourts.gov/opinions-orders/0/all/ddr-holdings

http://www.cafc.uscourts.gov/opinions-orders/0/all/hulu

http://www.cafc.uscourts.gov/opinions-orders/0/all/planet-bingo

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