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I see a lot of questions on software patents, but very few questions about eligibility, post-Alice.

What is the current thinking, particularly in the wake of Enfish and Bascomb?

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    Not sure if this is answereable. The answer could be "it's not yet defined completly". – DonQuiKong Jun 27 '17 at 18:46
  • @DonQuiKong That's precisely why I'm asking. Every patent attorney I speak with regarding software patents recites as mantra of "Alice, Bilski, Mayo, etc." and more recently "Enfish and Bascomb". I see a lot of questions about software patents, but little discussion of these critical cases in relation to eligibility. – DukeZhou Jun 27 '17 at 18:58
  • It might be that everyone is doing what they think might be the conclusion. Have you checked MPEP? In many cases that's a very good resource for interpreting the law and cases. – DonQuiKong Jun 27 '17 at 19:01
  • I am very versed in these cases, as it is critical to my own business. This question is intended more as a public service, since I rarely see case history being brought up in relation to algorithmic patents. – DukeZhou Jun 27 '17 at 19:03
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    Add an answer then, I'm very interested in reading it – DonQuiKong Jun 27 '17 at 20:33
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There is no technically correct answer under US law because the Supreme Court left patent eligibility a confusing mess.

There is, however, a practical answer. The practical answer is to follow a "cover all possibilities" strategy. As a preliminary matter, consider filing in other countries where the law is better settled. Believe it or not, the patent system in China is becoming more stable and software-friendly. Similarly, consider filing in larger English speaking countries (because translation is expensive) as well as in Germany (biggest EU economy).

As for the US, you'll want to draft as broad a specification as possible. Assume that the specification needs to cover a situation where patent eligibility broadens (a possible outcome if the Supreme Court experiences retirements and Trump replaces some Justices with ones holding the typical conservative pro-private property attitudes), and to cover a situation where patent eligibility narrows (a possible outcome if the infringer lobby continues to succeed in getting Congress to restrict patents and patent enforcement).

Don't file a "track one" application. Instead, file a provisional application (gets you an extra year) followed a year later by a non-track-one utility application. The USPTO will probably sit on it for 3 years or more. That puts you at least four years out. I expect US patent law to be more settled four years from now, and at that point you can amend the claims to reflect whatever happens to eligilibity standards. If the law remains unclear four years out, you can appeal, which adds another four years. Hopefully the law would settle while on appeal, making the case either a winner or loser (and if it is a loser, you can then amend in an RCE).

The bottom line is that your best bet is to hedge your bets. Your ability (or your lawyer's ability) to draft a broad, enabling disclosure will be critical, since your disclosure is going to need to support claims that track the state of the law in the future.

In my opinion, it is inexcusible that Congress hasn't clarified eligibility -- they could do so quickly and decisively. Instead, the Supreme Court is left writing the law itself (seriously, read Section 101 and it looks like everything is patent eligible; all of the restrictions in the Alice and similar cases are pretty much what the Supreme Court guesses Congress would do if Congress could walk and chew gum at the same time). This leads to yet another point of uncertainty -- even if the Supreme Court finally hands down clear guidance, Congress could alter it at any time.

All of which means you need to keep the maximum number of options available. File foreign, the law is in flux in the US in a way that it isn't in other major economies. File a broad specification that will support claims in the US no matter which way eligibility goes. By all means, it is smart to file on something valuable if you think there is a reasonable chance patent law does or will support those claims.

You do need to see a lawyer, though. This isn't legal advice, and you do need legal advice. What I'm trying to do is give you practical issues to ask your lawyer about.

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    I think this a nice practical point of view with quite reasonable advice. However, I fear it doesn't really answer the question asked since it doesn't include any discussion of the current law at all, but rather answers something like "how can I best protect my software invention?". In contrast, the question focuses specifically on the judicial development of how patent eligibility for computer-implemented inventions is handled. – Maca Jun 28 '17 at 5:18
  • Very good perspective. My understanding is that abstract is still falling under "I'll know it when I see it", which can't hold forever. – DukeZhou Jun 28 '17 at 13:25
  • Maca -- the current state of the law is unfortunately unknown. It is like the old joke that if you ask 10 lawyers, you'll get 20 answers. I make a point to do examiner interviews while seeking a patent, and on more than one occasion the examiner and I agreed that there was no guidance on point. We know a few things: A naturally existing thing isn't patentable (would penicillin be eligible?), pure formulas aren't patentable, methods of organizing human behavior aren't patentable (this is definitely "I know it when I see it"). Adding a general purpose computer doesn't add any patentable weight. – Gary S Jun 28 '17 at 21:09
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I am not a patent attorney so this advice is probably inadequate. That said, I do have several algorithm based patents so perhaps my insights are of value. My understanding is that abstract mathematical algorithms are simply not patentable. However, the use of an algorithm to solving a specific technical application may be patentable. If you are just automating a series of steps that could otherwise be done manually, don't expect a patent to be issued either. In my case, the algorithm patents I have are the application of unique mathematics to solving a very specific problem where the solution was unexpectedly advantageous over the prior art. This unexpected advantage was a key aspect to convincing the patent examiner of novelty and non-obviousness.

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    I'd add that even if it can be done by hand, if the way of doing it has a specific effect only on a computer (like saving computation time or memory) over the prior art, that is probably patentable. But this is based on european law to which the US seems to be coming closer, so who knows. – DonQuiKong Jun 28 '17 at 16:52
  • This jibes with much of what I know. (My problem is somewhat deeper, in that the algorithm itself is the product--novel, non-obvious, game mechanics that constitute a very compact algorithm. Prior to Alice, there was no question of patentability, and non-eligibility post Alice would be understood as an unintended consequence. It's still quite an interesting endeavor, as, if game mechanics are no longer eligible, it opens up a gap for protection of creative work, which is otherwise enshrined in areas like copyright, which is insufficient for protection of mechanical processes. – DukeZhou Jun 28 '17 at 16:59
  • I've been trying to devise answers to the question: what does this algorithm do? The most precise answer would probably be "it generates a very specific type of complexity, better and more efficiently than previous algorithms." The complexity is itself the product, where "product" is used both in the mathematical and economic sense. – DukeZhou Jun 28 '17 at 17:09
  • Remember that convincing the patent examiner to grant a weak or bad patent never works out well. The US has aggressive post-grant review procedures, and there are companies, such as Unified Patent, that specialize in putting patents into post-grant review. Even without post-grant review, the second you try to enforce a patent, the defendant/infringer will claim invalidity. So the test isn't whether the examiner can be convinced -- it is whether the patent claims will actually be valid. – Gary S Jun 28 '17 at 21:02
  • @GaryS I have 85 patents and in my experience you almost always get an initial rejection. Its part of the game examiners play to get you to do some of their homework for them. It isn't a matter of trying to get a weak patent granted, its is a matter of getting any patent granted. In any case most good patent attorneys start with overly broad claims so some back in forth is inevitable. – Eric Shain Jun 28 '17 at 21:16

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