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Fish Releases Latest Case Study, "Patenting Software: A Case Study in Overcoming Alice"

February 11, 2019

Fish Releases Latest Case Study, "Patenting Software: A Case Study in Overcoming Alice"

February 11, 2019

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Fish has released our newest case study, which highlights the firm’s prowess in software patent prosecution. Not only has Fish handled more software patent applications than any of our peer firms, but our allowance rate is also higher, and we retain more claim scope after receiving Alice rejections. Our software patent allowance rate has also been significantly higher than the USPTO’s overall software patent allowance rate for many years.

How did we achieve these outstanding results? Based on interviews with several Fish software attorneys, it comes down to a winning combination of knowledge, skill, and experience.

Fish devotes significant time, resources, and talent to our software clients. Over a third of all Fish attorneys work with software in some capacity. The size and combined experience of this team allow our software attorneys to share knowledge when developing strategies for handling Alice rejections, while the sheer number of software applications we have handled provides a solid data set for determining the success of those strategies.

But our skill is not just derived from having handled many Alice cases. Fish’s involvement with Alice started before the case was even decided. The two-step test the Court applied in Alice was the culmination of a line of patent-eligibility cases that began with Mayo Collaborative Services v. Prometheus Labs, Inc., 566 U.S. 66 (2012). Fish represented Mayo in that case and first developed the two-part test that the Court adopted in it for evaluating the patentability of claims directed to laws of nature.

After Mayo, we sprang into action under the (correct) assumption that the Court would eventually extend its reasoning to claims directed to all judicial exceptions, including abstract ideas, and that this could have potentially significant consequences for our software clients. Accordingly, our software attorneys began drafting their applications with the Mayo factors in mind to circumvent as many future challenges as possible. In order to stay abreast of the latest post-Alice legal developments, we also launched the Fish Alice Tracker, the first case tracker of its kind to monitor subsequent district court, Federal Circuit, and Patent Trial and Appeal Board (PTAB) Alice decisions.

By developing the legal standard that formed the basis of Alice, preemptively incorporating its reasoning in our software patent applications, and proactively documenting the lower courts’ application of it, we have always kept our clients one step ahead.

For more information, please see the full version of “Patenting Software: A Case Study in Overcoming Alice.”