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The US Supreme Court’s decision in Alice has made it difficult to patent software, but it is still possible if you apply the right strategy, argue Terry Clark and Gregory Parker of Bass Berry + Sims.
Nearly two years have passed since the US Supreme Court’s landmark decision in Alice Corp v CLS Bank. To say the Alice decision hashad a dramatic effect on the US patent system is an understatement. Obtaining and enforcing computer-implemented software patents has become far more difficult.
The US Court of Appeals for the Federal Circuit, the Patent Trial and Appeal Board (PTAB) at the US Patent and Trademark Office and district courts nationwide have relied on Alice to overwhelmingly invalidate software patents. The invalidation rate for software patents faced with 35 USC §101 challenges is approximately 75% in district courts and more than 90% at the Federal Circuit. These numbers are daunting.
The Alice decision has infused a great deal of uncertainty into the law of patent eligibility. Patent owners and practitioners remain confounded by what needs to be done to reliably and predictably obtain and defend the vast array of innovations that incorporate software. Given how few software patents have survived patent eligibility challenges since Alice, patent owners and practitioners have little guidance on what types of software innovations are patent-eligible. On the flipside, there is plenty of guidance on what types of software innovations are not patent-eligible.
Terry Clark, Gregory Parker, Bass Berry + Sims, Patent Trial and Appeal Board, US Patent and Trademark Office, patent, software patent, Alice Corp v CLS