Patent Eligibility Today: Are Software Methods Patentable?

On Friday, April 12, 2013, i will be at American University Washington College of Law for a program titled Patent Subject Matter Eligibility Today: Software, Genomics, and Business Methods. I will be participating on a panel that begins at 10:15am, which is titled CLS Bank en band: Are Software Methods Patentable? The event is free to attend. To register to attend you can visit WCL Event Registration.

Topic for Discussion

The following is what our panel will discuss regarding application of Section 101 to software:

(1)  For many years, a large segment of the software industry viewed patent protection as inappropriate for software, relying instead on a mixture of copyright and trade secret law.  At a high level, should software be patentable?

(2)  Two common criticisms of software patents, as compared to patents in the pharmaceutical and biotech sectors, are (a) the relatively low cost of invention; and (b) the relative ease of implementation.  Are these the right factors for us to be considering for purposes of inventiveness?

(3)  Many of the issues with software patents that are now being addressed through Section 101 were previously addressed through Section 103.  A defendant would simply say, “This was previously done on paper.  It was obvious to computerize the process.”  Is Section 103 a better lens through which we should view software patentability issues?

(4)  In the last ten years, the Federal Circuit has emphasized the need for detailed algorithmic disclosure to support general purpose computer implementations of means-plus-function patent limitations.  Should a similar standard be imposed more broadly for software patents?

(5)  Uncertainty has traditionally been destabilizing in the patent world.  As we focus in on a section 101 approach to software patents, which is more important: certainty or flexibility?

I have definite thoughts on all of these topics, and did participate with the other panelists (see below) in arriving at these five questions as a good place to start our patent discussion. Still, I nearly jumped out of my seat when I read question number 2. I am already chomping at the bit with respect to fielding this question on Friday.

Certainly a criticism of software patents is that these innovations are so easy to make and cost so little to achieve. It seems to me that if we are going to be perfectly honest and engage in a discussion that embraces the realities of the industry we have to recognize that this criticism from those who detest software patents is based on factual fallacies.

Tell me… if software is so easy to implement why doesn’t software of all sorts ever seem to work properly? Why does software require so many fixes and have so many bugs? It seems the best we ever get any more is beta-version after beta-version. The market tolerates defective products and then then the nay-sayers use the ease of creating defective software as an excuse for not issuing software patents? I’m already getting worked up! This promises to be a lively discussion indeed!


Paul M. Schoenhard 

Mr. Schoenhard is Counsel with the firm Ropes & Gray LLP in Washington, DC. Mr. Schoenhard has extensive experience in patent litigation and has practiced in federal courts and before the United States International Trade Commission. With a technical background in mathematics and computer science, his litigation experience spans cases relating to consumer electronics, computer software, Internet-related technologies, telecommunications, and semiconductors. In addition to his active practice, he serves as a member of the adjunct faculty at American University Washington College of Law, where he teaches “Patent and Trademark Appeals Before the Federal Circuit.”

Nathan Grebasch

Mr. Grebasch currently serves as Intellectual Property Counsel with Smiths Detection Inc. a worldwide leader in the development of government regulated advanced technologies used in threat detection equipment to detect and identify constantly evolving chemical, biological, radiological, nuclear and explosive (CBRNE) materials, contraband and dangerous or illegal materials. Prior to joining Smiths Detection, he served as outside counsel for several Fortune 500® high technology and software manufacturers. In these roles, he focused on opinion counseling, as well as, patent portfolio development including patent preparation and prosecution.

Alisa C. Key

Ms. Key is Vice President and Associate General Counsel of Rosetta Stone Inc. based in Arlington, Virginia. Ms. Key joined Rosetta Stone in January 2011 after many years in private practice working in the field of intellectual property law. In private practice Ms. Key focused on many areas of intellectual property law including, trademarks, unfair competition, counterfeit goods, copyrights, domain names, licensing issues and litigation. At Rosetta Stone, her responsibilities include a wide array of legal matters including technology licensing, piracy, privacy, trade secrets, employment, copyrights, trademarks and patent counseling, enforcement and litigation.

Andrew Riley

Mr. Riley is currently a partner at Finnegan, Henderson, Farahow, Garrett and Dunner LLP where he focuses his practice on patent litigation before U.S. district courts and the U.S. International Trade Commission (ITC). His practice also includes patent counseling, licensing, opinions, and reexamination proceedings before the U.S. Patent and Trademark Office. ??Mr. Riley has worked on matters involving a wide array of technologies, including medical devices, mobile phones, software, wind-turbine generators, motor and hybrid vehicles, Internet applications, semiconductors, image sensors, manufacturing machines, and pharmaceuticals.

Gene Quinn

Mr. Quinn is a US Patent Attorney and the founder of He is also a principal lecturer in the top patent bar review course in the nation. His particular is in the area of strategic patent consulting, patent application drafting and patent. He primarily works with start-up businesses throughout the United States and around the world. As an electrical engineer with a computer engineering focus he frequently assists entrepreneurs and small businesses with software, computer implemented methods, business methods and Internet innovations. He also does work with electrical and mechanical inventions as well. Mr. Quinn started the widely popular intellectual property website in 1999. The American Bar Association has recognized as one of the top 100 legal blogs four years in a row, from 2009 through 2012. In both 2010 and 2012 readers of the ABA Journal voted the top Intellectual Property Law Blog on the Internet.


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