Up until recently, software patents accounted for about half of all patents issued by the United States Patent and Trademark Office (USPTO). The U.S. Supreme Court has since made it more difficult to receive a software patent. However, the tide is shifting back in favor of inventors and patent owners.

In fact, since the initial downturn in software patents there has been a strong resurgence of favorable law. Furthermore, the USPTO has issued guidelines as to what is allowable subject matter. Taking both the favorable law and the guidelines into account when moving forward with a software related patent application has proven to be a successful strategy.

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Andrei Iancu has been confirmed by the United States Senate as the next Under Secretary of Commerce for Intellectual Property, and the next Director of the United States Patent and Trademark Office.  Mr. Iancu was the managing partner at Irell and Manella from 2012 to 2018.  He received a B.S. in Aerospace Engineering from UCLA in 1989, an M.S. in Mechanical Engineering from UCLA in 1990, and his JD from the UCLA School of Law in 1996.

Mr. Iancu was confirmed by the Senate by a vote of 94-0.  He is admitted to practice before the United States Patent and Trademark Office and has also practiced in the field of IP Litigation.  Mr. Iancu has represented clients before the United States Court of Appeals for the Federal Circuit and also before the United States International Trade Commission.

As someone that has spent a career in the field of intellectual property, it appears that Mr. Iancu is very much so qualified to take the reigns at the Patent and Trademark Office.  Of course, technically, the Under Secretary of Commerce is a political position, and that may take some adjusting to Mr. Iancu, but after spending so many years entrenched in the IP world, it would seem that Mr. Iancu is in touch with the needs of the patent community, both from a prosecution and an enforcement perspective.

At 12:01 AM on January 20, 2018, the United States Government went into shutdown based on impasse in congress over budgeting.  Of course, the United States Patent and Trademark Office (USPTO) is an agency of the United States Government.  The government shutdown applies to all “non-essential” government agencies.  For example, agencies that are considered as “non-essential” include some National Parks, Smithsonian museums and the Library of Congress.  Unlike the 2013 government shutdown, however, national parks with entrance fees will remain open.

The administration has encouraged any agencies that are funded outside of the annual appropriations process to remain open.

According to the USPTO, the agency will remain operational.  The USPTO indicated that it is able to remain open as it has access to prior year fee collections.  This will allow the USPTO to remain operational for a “few weeks.”  If you have any questions regarding the effect of the government shutdown on the USPTO, please refer to their website, or feel free to give us a call.

Protecting Software Using Patent And Trade Secret Law

Traditional legal strategies have pitted trade secret law and patent law against one another.  This is because patents are made public while trade secrets must be kept confidential.  However, there is a way to utilize the best of what both have to offer.

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35 USC §101 Rejections

Since the U.S. Supreme Court decided Alice v. CLS Bank in 2014 there has been a drastic increase in 35 USC §101 rejections. The decision emphasized that inventions “directed to an abstract idea” are not patentable. The U.S. Patent Office has used this decision to reject a majority of software utility patent applications as well as a large number of U.S. software patents already issued before Alice was decided.

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In this article, we are continuing the discussion of a legal strategy to protect software that involves segmenting software into three tiers and protecting each tier separately. This strategy has been developed in response to a 2014 U.S. Supreme Court case, Alice v. CLS Bank, that effectively slammed the door on receiving and enforcing software utility patents. The protectable tiers are as follows:

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Patent. Seal and ImprintIn a previous article, we discussed a legal strategy for protecting software that involved segmenting software into three tiers and protecting each tier separately. Those tiers are as follows:

  1. Level One: User Interface
  2. Level Two: API
  3. Level Three: Algorithms and Data Structures

This article focuses on the first tier, which involves how the user interacts with the program.

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Software Law

Although the protection strategy has changed, the answer is yes.

Until recently, software patents accounted for about half of all utility patents issued by the USPTO. Application of a 2014 U.S. Supreme Court case, Alice v. CLS Bank, effectively slammed the door on this practice. Likewise, software patents issued prior to this decision have been routinely stricken down by the courts as invalid. Only a small number of utility software patents have still been allowed at the expense of nuanced arguments and arduous appeals. However, there remains a variety of methods when used in combination that can arguably give broader legal protection with numerous practical advantages to the software industry.

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In the day following Michelle Lee’s resignation as Director of the USPTO, Joseph Matal was announced as Acting Director. These events appear to bring to a close the recent turbulence of leadership at the Office. It wasn’t until March that Director Lee’s position with the Office was confirmed, and that confirmation was given only on the final day to respond to a Freedom of Information Act request. Acting Director Matal’s pedigree diverges from that of the immediate past two directors, having never been a practitioner of patent law, instead having served as counsel to the Senate Judiciary Committee from 2002 to 2012, at which point he became an Associate Solicitor in the USPTO. He did, however, play a significant role and is intimately familiar with the enactment of the America Invents Act. No timeline has been provided as to when a permanent director will be named. Director Lee served as Acting Director for over a year before being named Director.

Seal of the United States Supreme Court

Summary of the Decision:
On May 22, 2017, the U.S. Supreme Court overturned nearly 30 years of patent litigation practice by narrowing the application of a statute describing where plaintiffs may file a lawsuit. In the past, patent holders have been able to file suit in almost any jurisdiction in which a defendant sells an infringing product despite a defendant’s physical location. Critics of the practice have argued that plaintiffs were permitted to “forum shop” since they could seek out jurisdictions with favorable laws and judges. In large part this has led to lawsuits filed in the Eastern District of Texas, which has seen the most patent litigation in the country.

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SUNDAY, MARCH 18, 2018