Video Blog 23: Algorithm and Business Method Patents: Searches Needed

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Here at Verna Law, one of our goals of 2020 is to keep growing our patent practice, especially with our patent agent, Wil Jacques.

Recently we’ve had a couple phone calls with potential clients who have business method or algorithmic patent ideas. In the last four or five years, ever since the Supreme Court decided a case called Alice, business method and algorithmic patents have been harder to procure.

The reason for this is as time has gone on, a case has gone to the Supreme court and Supreme court said, “We’re not saying that all algorithmic patents are void, just this algorithmic patent is void,” and well then there’d be another case and then that algorithmic patent was void until Alice.

What happened in Alice a few years ago? The Supreme court said that not all algorithmic patents are void, but they need to have an “inventive step.”

And where did the Supreme court decide to get this language?

Nobody really knows, but it’s an extra speed bump for algorithmic and business method patents.

So, it requires making sure that the algorithm that is being presented in a patent application is really and truly new and novel, which is what the statute already says, but now whatever an “inventive step” still means, while we’re still not 100% sure even three or four years down the down the line after that decision, but we need to make sure that we do our patent search.

We need to make sure that we’re thorough with that search. We need to find what other algorithms have anything to say with the algorithms that our potential clients give to us. And that’s really the key is that first step, not yet drafting the claims that’s truly important, but that first step of finding everything in the prior art that’s out there.

That’s something that we try to do very well and especially with the algorithmic patents and especially with ever since the Supreme court decision requiring an extra inventive step in algorithmic patents.

I’m Anthony Verna, managing partner Verna Law, focusing on IP and advertising law. Visit us at vernalaw.com, click on patents and you’ll see everything that we have to do with patents.

Thanks very much.