Dear Patenticity: Worried About Alice

Buckingham, Doolittle & Burroughs, LLC

Buckingham, Doolittle & Burroughs, LLCDear Patenticity: Worried About Alice

Dear Patenticity,

My startup is working on what we believe is a game-changing software application and we are concerned about others taking our idea and fielding a competitive product based on our work. We would like to obtain patent protection, but I understand that software is very difficult to patent since the Alice case, and software patents keep getting invalidated in the courts. Is it worthwhile to even try to patent this?


Worried about Alice


Dear Worried about Alice,

Your concerns may be overblown and a bit outdated. It’s true that software patents went through a tough time after the Supreme Court’s Alice decision in 2014, but a lot has happened since then. Ever since the Federal Circuit’s Berkheimer decision in 2018, we have seen a steady increase in software patents being allowed by the USPTO and upheld in the courts. In fact, according to a recent report by the USPTO’s chief economist the percentage of first Office actions containing an Alice-based rejection has returned to pre-Alice levels. To be sure, problems remain, especially with regard to Alice step one’s “directed to” analysis and the courts’ tendency to conflate patent-eligibility with other sections of the patent statute like obviousness and enablement. But, all things considered, software companies are much better positioned today to benefit from patent coverage than they were just after the Alice decision. Things are looking up. File early and file often.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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