DENVER BUSINESS JOURNAL JANUARY 27, 2017 The concrete road to solid patents CONCEPTS DEEMED ‘ABSTRACT’ MIGHT BE AT RISK, PATENT LAWYERS SAY f you are a software inventor, you should probably get to know Alice. I Alice may give you a road map to a patent — or it could be a roadblock. Either way, patent attorneys across the country are all talking about Alice. So say the patent attorneys at law firm Merchant & Gould’s Denver office, which specializes in patent law. The office’s 16 attorneys are patent lawyers, meaning they have science and law degrees. Four partners from the firm recently talked with the Denver Business Journal about what’s on the innovation horizon in 2017. And when it comes to software inventions, all roads lead back to Alice. Alice is shorthand for a 2014 landmark U.S. Supreme Court case, Alice Corp. v. CLS Bank International. The case shaped pat- ent law and it set a new series of guidelines from the U.S. Patent and Trademark Office KATHLEEN LAVINE, BUSINESS JOURNAL on abstract ideas. Kirstin Stoll-DeBell, Kathleen Ott and Timothy Scull are patent attorneys Alice Corp. wanted a patent on a com- and partners of Denver law firm Merchant & Gould. puterized system for limiting the risk of one party in a financial transaction. The are a lot of patents out there that I would chip and it’s run by software, which means court said it was not patentable because it say will probably not survive if they are that every product being made essentially was abstract. challenged under this framework.” has software at the heart of it controlling According to the National Law Review, But it’s complicated. what it does,” Lewis said. since the federal court and U.S. Supreme “[The Alice case] discussed at a lev- It can still take three to five years to get Court rulings were delivered in Alice, el whether a patent should be valid if its a patent on software, said Kathleen Ott, some issued patents may be vulnerable to claiming something referred to as an another partner at Merchant & Gould. That being deemed invalid. Specifically, patents abstract idea or is it more concrete,” Scull means an inventor shouldn’t tell anyone, related to software and business methods said. “The more concrete it is, the better except their lawyer. are being labeled as “abstract ideas” and chance you have to get a patent and one In 2013, the law changed to give pref- therefore constitute patent-ineligible sub- that will survive scrutiny up to the high- erence to those who are first to file a pat- ject matter under Alice, according to the est level.” ent application, not necessarily those who National Law Review article. So what does it mean for software conceived the idea first. But it’s not a death knell for software inventors? “Inventors have a tendency to want it to inventors. It does mean that inventors Inventors should stay focused on wheth- be perfect and work on it forever,” Ott said. need to drill down into the claimed inven- er technical problems had to be solved “File sooner than later. Get yourself pro- tion to get to the technology connection, instead of business process improvements, tected. It may not be perfect. But get that said Timothy Scull, a partner at Merchant said George Lewis, partner at the firm. line in the sand established and continue & Gould. “The reality is that everything in our to develop.” “There has been a shift,” he said. “There lives now has a general-purpose computer - Monica Mendoza This article appeared in the Denver Business Journal on January 27, 2017 on page 10. It has been reprinted by the Denver Business Journal and further reproduction by any other party is strictly prohibited. Copyright ©2017 Denver Business Journal, 1700 Broadway, Suite 515, Denver CO 80290.