News

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.

The evolution of patent law pertaining to software has been a complex and dynamic process, shaped by historical roots, statutory patent law, and legal doctrines of both the Supreme Court and the Court of Appeals for the Federal Circuit. From the early days of English “letters patent” to the modern-day Mayo/Alice test, various key concepts and judicial doctrines have impacted the development of patent law relevant to software inventions.

Judicial doctrines related to patent eligibility are particularly significant to software patenting. Historically, courts have grappled with determining what types of subject matter deserve patent protection. Such determinations have been applied to software, which has rapidly advanced (following its emergence) to become a fundamental context of technological innovation.

The state of software patenting today is heavily influenced by key judicial doctrines related to Subject Matter Eligibility, Written Description, Enablement, and Best Mode, as well as (to a lesser extent) judicial doctrines related to Obviousness, Means-Plus-Function Language, and Claim Interpretation in the context of Functional Language. These doctrines provide a framework for determining the eligibility and patentability of software inventions, attempting to take into account the unique characteristics and challenges associated with software-related innovations.

As technology continues to advance, the impact of these key doctrines on software patenting will remain a focal point for patent practitioners and innovators. At McCoy Russell, we understand that navigating these doctrines is critical to effectively securing and enforcing software patents in the modern era.

In the next post, McCoy Russell explores software patents and the challenges they present in greater detail.

Supporting start-ups, iconic brands, world-renowned academic institutions, and government agencies, McCoy Russell pioneers novel solutions for data driven and streamlined patent prosecution to support its clients in securing their intellectual property needs.

In 2023 McCoy Russell filed over 1,500 patent applications and received 810 issued patents. How does McCoy Russell keep pace with substantially larger and more traditionally-run firms?

Integrated in the foundation of the firm’s collaborative structure, McCoy Russell’s “360 Review” process engages patent practitioners in the firm at all levels of experience to review every patent application drafted by the firm. Every patent application undergoes at least two, and usually three, levels of review – even if drafted by a senior patent attorney with more than 20 years of experience. This process is ever-adapting in order to keep up with the latest challenges and opportunities of the patent prosecution landscape.

McCoy Russell’s patent drafting and prosecution leverages the firm’s software arm, IronCrow IP (https://ironcrowai.com/). IronCrow AI was developed in-house to bring modern advancements in machine learning (ML) to support patent professionals in the form of time saving tools and insightful analytics. By leveraging ML and AI-tools to automate tedious tasks and provide predictive insight, patent professionals can spend more time on, and be better equipped for, the high-level strategy and lateral thinking at which they excel.

In further support of the firm’s intellectual property practice, McCoy Russell continues to enable, support, and refine its hybrid-remote work while maintaining a collaborative approach. McCoy Russell cultivates a firm culture that utilizes interactive cross-team training programs and staff wellness initiatives.

The firm’s unique collaborative structure and dedication to innovating the practice of intellectual property keeps McCoy Russell filing with quality and frequency. McCoy Russell continues to innovate and provide its clients with the quality and value they’ve come to expect.

A woman-owned firm that often flies under the radar, McCoy Russell garners recognition for its high quality patent application drafting and filing volume. The firm is proud to support some of the top 50 patent filing companies (within the USPTO) in securing their intellectual property and developing their patent portfolio.

McCoy Russell was pleased to attend PDX Women in Tech and Law happy hour to benefit Rose Haven, a local organization that provides basic needs and services to women, children, and gender non-conforming folks experiencing the trauma of abuse, loss of home, and other disruptive life challenges. Associates Jessica Fauble and McKenna Park along with fellow attendees put together bags with winter care items for the guests of Rose Haven.

It was a nice night of building connections with other women in tech and law and fostering support for the Portland local community.

As anticipation mounts for this year’s AUTM Annual Meeting in San Diego, IP attorneys and other technology transfer professionals from around the globe are gearing up to converge on the event. Among them will be McCoy Russell LLP represented by partners John Russell and Justin Wagner.

For McCoy Russell, a woman-owned firm specializing in intellectual property law and technology transfer, the AUTM Annual Meeting is a premier event that offers invaluable opportunities for professional growth and collaboration. The firm looks forward to engaging with leaders and experts from academia, industry, and government agencies gaining insight into the latest developments in technology commercialization.

As a collaborative firm, McCoy Russell hopes to keep its employees socially connected and engaged. The firm gathered at collaborative space to enjoy some hot cocoa and view some of the Portland Winter Light Festival exhibitions around the city. The night was filled with art and technology as the firm walked an illuminated route to various exhibitions set up by local artists around the Pearl District and Downtown Portland. It was a fun night to connect and experience a special event in Portland.

A longtime supporter of INTA, McCoy Russell continues to volunteer in INTA Committees. Founding Partner Anna McCoy has been an active member of INTA’s committees since 2016.

This year, Anna is set to contribute to INTA’s Internet Committee. This committee aims to identify evolving technologies dependent on the internet and developing advocacy strategies to address intellectual property-related challenges. Additionally, the committee aims to advocate for the implementation of the EU’s Network and Information Systems Directive (NIS2) and represent intellectual property interests within the ICANN system. Furthermore, it will monitor and participate in non-ICANN-related Internet Governance efforts, ensuring a voice for intellectual property owners.

Beginning her journey on the Famous and Well-Known Marks Committee, Anna brings and international perspective to McCoy Russell’s Trademark and Branding practice. In 2020, she served on the Designs Committee, collaborating with other committee members from around the world to create recommendations for International Design Enforcement as a part of the Designs Enforcement Subcommittee. In 2021, her expertise extended to the Design Committee’s Design Law and Practice Subcommittee.

Bringing over 20 years of experience to McCoy Russell’s Trademark and Branding practice, the firm’s trademark team aims to develop client portfolios with strategic business alignment. Volunteering and cooperating with INTA strengthens the firms international trademark practice and provides exposure to diverse perspectives, regulatory updates, and collaborative efforts with industry experts.