March 2024

As a part of McCoy Russell’s continued support of INTA, the firm is proud to announce its attendance to INTA’s Annual Meeting in Georgia in May. With its membership across 181 countries, INTA’s Annual Meeting is the largest gathering of its kind. Featured programming, business development, discussion on brand rights and IP innovation INTA is a unique opportunity to develop and deepen relationships and collaborate in developing ways to protect and promote the rights of Trademark owners.

An active member in Oregon’s Patent Law community, McCoy Russell is pleased to have Justin Wagner attend Oregon Patent Law Association’s (OPLA) Salishan Conference in April. This one of a kind event hosted at Salishan Costal Lodge is focused on continuing education on topics relating to Patent Law and fostering community among patent professionals in the Pacific Northwest.

McCoy Russell is proud to support OPLA and its continued efforts in bringing unique topics in Patent Law to the local community.

Recognized for his work in patent law, Wes Nicholson joins the top 6% of practicing attorneys nationwide recognized in the 2024 edition of Best Lawyer’s The Best Lawyers in America. Best Lawyers is entirely based on peer review to capture the consensus opinion of leading lawyers about the professional abilities of their colleagues within the same geographical area and legal practice area.

McCoy Russell congratulates Wes on his inclusion and recognition by Best Lawyers.

With over 15 years of experience, Wes currently supports some of McCoy Russell’s larger clients in developing their patent portfolios. Outside of the firm, he has been an active member in the Patent Law Community, serving as OPLA’s president in 2020/2021 and past president 2021/2022 bringing advanced topics in patent law and fostering community. Wes continues to partner with local organizations in presenting topics relating to patent law.

As progress in software-based innovations continues, so do legal debates surrounding the patenting of software. Following various historical twists and turns, patents have come to be granted to “processes, machines, manufactures, or compositions of matter” that are inventive—meaning novel and non-obvious—and which the inventor enables the public to practice after the patent expires. However, software abstract in ways that tangible inventions are not, and as a result software inventions have been subjected to significant additional criteria. Moreover, the line between patentable software innovation and unpatentable software innovations can be difficult to discern, which in turn complicates the patenting of software.

One of the fundamental challenges in patenting software lies in navigating the boundary of patentable subject matter. Currently, patentable subject matter doctrine revolves around the presence of language in the claims related to “judicial exceptions,” which primarily encompasses things like “abstract ideas,” “natural phenomena,” and “laws of nature.” Due to the abstract nature of software (as well as its complex relationship to mathematical algorithms), judicial exceptions have proven to be a source of contention among patent professionals, as well as in the software industry. It can be difficult to distinguish between software that avoids issues related judicial exceptions in a patentable manner, and software that includes abstract ideas or mathematical concepts in a way that will prohibit patent protection.

Additionally, some critics believe that granting patents for software innovations can inappropriately stifle competition and hinder progress. One contention is that the rapid pace of technological advancements in the software domain, and the increasingly collaborative and iterative nature of software development, the traditional patenting process—which is often time-consuming and resource-intensive—may hinder rather than foster innovation. Another contention is that granting patents for software innovations can lead to the creation of patent thickets, where a multitude of overlapping patents cover a particular technology, creating legal complexities and impeding further development.

Finally, the high number of patent infringement lawsuits in the software industry may be attributable at least in part to ambiguities surrounding the patentability of software. The lack of clear guidelines for determining the patentability of software inventions has contributed to lengthy legal battles and an environment where patent trolls exploit the system for financial gain.

In the next post, McCoy Russell will explore approaches to patenting software inventions taking these challenges into account.

McCoy Russell Partners John Russell and Justin Wagner are back from AUTM’s Annual Meeting. With over 2,000 attendees, the Annual Meeting programming was a great opportunity to learn from Technology Transfer industry professionals and experts on topics such as innovation harvesting and monetizing ChatGPT and Generative AI. John and Justin enjoyed meeting in-person with several clients and establishing new relationships as well.