Wednesday, July 3, 2019

IP Watchdog - As Congress Contemplates Curbing Alice, More Than 60% of Issued U.S. Patents are Software Related - Brief Comment

Congress needs to pass predictable patent eligibility law for software related inventions, but not at all sure this will happen in 2019.

Patent eligibility is too unpredictable since the U.S. Supreme Court's Alice decision. Sure, some software inventions don't deserve a U.S. patent as the claims lack novelty or would have been obvious, but once we step away from a prior art analysis under 35 U.S.C. 102/103 and clarity, enablement and written description requirements of 35 U.S.C. 112, decision-makers (i.e., judges and examiners) have opportunity to abstract (generalize) a patent claim based on subjective opinion then assert without evidence the rest the claim language isn't significantly more.

We also need clarity on patent eligibility for the sake of industries that are not part of the traditional software industry. For example, Raymond Millien's As Congress Contemplates Curbing Alice, More Than 60% of Issued U.S. Patents are Software Related and McKinsey's Ondrej Burkacky's Rethinking car software and electronics note the growing importance of software in the car industry. Could it be true that a car contains 150 million lines of code?

Should the United States let more than half the U.S. patent filings which related to software languish under the unpredictable patent eligibility Alice test? Arguing Alice is not all that bad and consistent with centuries of court precedent or that we now have a Chinese foreign patent troll problem are the latest shaky excuses. See e.g., career patent litigator John Vandenberg's hearing testimony.

Congress has not acted on this issue for five years since the Alice decision. As Justin Bieber might say: "What up Congress?" Unfortunately, the 35 U.S.C. 101 reform bill is tied to a proposal to modify 35 U.S.C. 112(f) that is likely to increase means-plus-function treatment of functional elements in claims.

Copyright © 2019 Robert Moll. All rights reserved.