Writing and Preserving Software Patents
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Learn how your company's patents stand in the eyes of the court and how to recognize when a patent claim may be successful.Every industry relies on software in some form, from financial services to clinical diagnostics and bioinformatics to supply chain management. It's important to protect software innovations through strong patents, but this has been difficult in recent years due to decisions on patent subject matter eligibility from the Supreme Court and Federal Circuit. Dozens of issued patents have been invalidated in precedential decisions, and thousands more stand on shaky ground. Are business methods and software still patentable? Are your issued patents still valid? Even if you do manage to get your application granted by the patent office, will a court just throw it out? This topic examines recent patent eligibility jurisprudence including the USPTO's own internal guidance and training for patent examiners, and will help you understand the eligibility tests applied by the patent office and courts. The material also provides tips and strategies for application drafting and patent prosecution to obtain strong, valid patents; and conversely to identify issued patents that are vulnerable to invalidation. Identifying potentially invalid patents in their own portfolios may help companies avoid costly and unsuccessful litigation. Accused infringers will also be better able to negotiate settlements or avoid litigation once able to identify and articulate weaknesses in competitors' patents. This information is critical for patent prosecutors, litigators, and corporate IP counsel to obtain and enforce strong patent protection.
AuthorsDaniel Rose, Foley & Lardner LLP
Patent Subject Matter Eligibility Under 35 U.S.C. §101
• Supreme Court and Federal Circuit Jurisprudence: Bilski v. Kappos, Mayo v. Prometheus, Alice Corp. v. CLS Bank
• The USPTO's Guidance to Examiners: A Different Test? Ex Parte Amancherla, Ex Parte Cummings, Ex Parte Cortina
• Synergizing the Federal Circuit's Decisions With the USPTO's Two-Prong Test: SRI International v. Cisco, Bridge and Post v. Verizon Communications, Uniloc v. ADP, American Axle v. Neapco, KPN v. Gemalto
Particular Issues With Software Patents and 35 U.S.C. §112
• Functional Claiming: What's the Structure of a Module?
• Williamson v. Citrix Online and the USPTO's Guidance to Examiners
• Recent Decisions Invalidating Patents Under 35 U.S.C. §112 Rather Than §101: Ex Parte Ehlers, Ex Parte Mauri, Taylor v. Iancu
Strategies for Application Drafting and Prosecution
• Drafting Tips: Functionality, Complexity, Problem Solving, and Steering Applications
• Prosecution Tips: Examiner and Art Group Allowance Rates; Arguments That Don't Work, and Arguments That Do
Conclusion and Question