WASHINGTON – A 2014 U.S. Supreme Court ruling on "abstract" patents has hit patent litigation hard and reduced the burden on software developers in the three years since its ruling, according to two experts in the intellectual property law.

The University of Chicago Law School Professor Jonathan Masur and intellectual property litigator Dallas attorney Ronald Burns discussed the impact of the noteable patent ruling, Alice Corp. v. CLS Bank International, with the Southeast Texas Record.

Masur said the Supreme Court has a long line of doctrine holding that abstract ideas are not patentable, making the ruling, often referred to as "Alice," par for the course. The ruling has been both a blessing and a curse, according to the professor.

“It has hurt patent litigation in the sense of making it harder to obtain and assert those patents,” Masur said to the Southeast Texas Record in an email. “But it has helped the patent system and helped software research and development by eliminating many patents that were burdening the system and taxing innovation.”

Thousands of business method patents issued and patent applications filed, were suddenly cast into doubt after the Alice ruling, according to the attorney.

Burns said the Alice decision represented a seismic shift in the practice of patent law – particularly in the enforcement of patents, adding since the early 1900s, U.S. patent law concerning patent eligibility under Section 101 was fairly well settled.

“Almost any invention was eligible for patent protection, unless it was an abstract idea as a mathematical algorithm, a natural principle as a naturally occurring chemical reaction or an impossible machine/system as seen in a perpetual motion machine,” Burns told the Southeast Texas Record. 

Breaking down the Alice patent eligibility analysis, Burns said a court must determine whether a patent’s claims are directed to a patent ineligible concept – such as an abstract idea or natural principle.

“The Alice decision thus clarified that an ineligible abstract idea is not made eligible simply by implementing the idea on a computer,” Burns said.

“Many saw the decision as a positive step in cleaning up what they viewed to be poor-quality business method and business software patents. Others viewed it as a huge setback to patent law – moving patent law back into the type of vague 101 inquiries that were thought to be settled a century before,” he added.

As for the future of the Alice ruling on patent litigation, that is a matter of opinion.

“It looks grim,” Masur said. “Software can still be patentable if it involves a real technical innovation. But software that just incorporates a new business idea cannot be patented.”

Burns is a bit more optimistic.

“As new software patent applications are filed, and patents are issued, consideration of Alice should – eventually – reduce the number of issued patents at risk of an Alice challenge in litigation,” Burns said.

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