Finding Patentable Subject Matter Post-Alice

By: Zachary LaFramboise, Nathan Mutter and Michael Drapkin

As technology companies continue to surge in Colorado, both larger companies and startup ventures continue to seek protection for their innovations through patents.

In many cases, these innovations lie in the computer and software realm. However, in the wake of the landmark 2014 Alice Supreme Court decision on patent-eligible subject matter under 35 U.S.C. section 101, approval rates for software-related patents plummeted. In cases invoking the Alice decision in the following year, the Federal Circuit only found a single invention to be subject-matter eligible.

Recent decisions from the Federal Circuit finding allowable subject matter have finally shined a pathway to patentability for many computer- and software-related patents, which have overwhelmingly remained in purgatory since the Alice decision. By analogizing patent claims to these allowed precedents, a pathway to allowance may be found. This article outlines the legal backdrop on which these decisions have arrived, then discusses approaches based on these allowed cases for a patent practitioner to succeed in drafting, prosecuting or litigating a computer- or software-related patent or patent application.

To read this story and other complete articles featured in the October 9, 2017 print edition of Law Week Colorado, copies are available for purchase online.