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27 October 2015Patents

LES 2015: Legislation needed to fix Alice uncertainty, says IBM attorney

Legislation will ultimately be required to address the uncertainty created by the Alice Corp v CLS Bank ruling, a lawyer from IBM told the LES 2015 Annual Meeting.

Reza Sarbakhsh, who is lead IP attorney at the company, said the decision has provided little guidance on what is patentable in the computer software space.

“As with any other business, uncertainty is the enemy,” he said, asking whether legislation should be required.

While he admitted that “I don’t know if we can convince Congress to address problems from our perspective” in the short term, “eventually legislation is the answer”.

Sarbakhsh was speaking during a lively discussion on the impact of the US Supreme Court’s ruling from last June. The court said computer-implemented inventions are not eligible for patent protection.

He said that based on anecdotal evidence from colleagues, other parties increasingly view a large patent portfolio as being weaker post Alice and are “trying to call our bluff”.

“The challenge is, do you want to litigate these patents,” he asked, adding that: “From a practitioner’s perspective it’s a problem when the people across the table no longer believe in the strength of your portfolio.

“It remains to be seen what the best strategy is [for dealing with this].”

Sarbakhsh also revealed that IBM is reviewing its patents by comparing them with those in the Alice case. And he noted that “just because something has the same classification as the Alice patents, it doesn’t mean it’s a bad patent … It requires deeper analysis”.

Despite the uncertainty in this area, Sarbakhsh said some large corporations are still pursuing software patents because the costs of getting them issued and the subsequent maintenance fees have not increased, even if patent value might be lower.

He said: “The decision is on where you think the law is going ... The issue is then do you keep feeding the pipeline ... or throw your hands up and say we’re not going to prosecute software applications”.

The answer, he continued, depends on size, arguing that “if patents are an asset class and driving substantial revenue, it makes sense to continue to file”.

He concluded: “Simply because one or two patents have been invalidated doesn’t mean we’re getting out of the patent business.”

The  LES 2015 Annual Meeting takes place from October 25 to 28 at the Marriott Marquis hotel in New York.

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