Cornerstone Software Patents – Innovative Software Patents
“Having negotiated hundreds of software patent applications with the Patent Office, the last few years have been the toughest because of a pair of U.S. Supreme Court decisions: Alice Corp (2014) and Mayo (2011) (Alice/Mayo). The Patent Office has used these decisions to reject thousands of software-based inventions on the basis that software is ineligible for patent protections because it represents an abstract idea. Never mind the fact that for decades before these decisions, the Patent Office allowed software patents regularly (note: they were still hard to get, but that was because of prior art rejections, not because they were allegedly ineligible subject matter). On January 7, 2019, the Patent Office issued new guidelines on how software-based inventions are to be examined with respect to the whole Alice/Mayo/ineligibility framework.” Rupak Nag; Intellectual Property Attorney
Alice/Mayo – The Biggest Hurdle to Getting a Patent for Innovative Software Just Got a Little Easier
An Inside Look: Cornerstone Software Patents for Twitter, Instagram, Nest, and others (see video)
I’ve found that even seasoned Silicon Valley engineers, founders, and technologists are not always clear on the patent negotiation phase, known as the patent prosecution phase, of complex software patents. So, it’s not surprising that younger start-ups and entrepreneur are also in the dark about what goes on behind the scenes, how long it takes for the patent prosecution phase, and the costs and fees.
After speaking with hundreds of upstarts over the years, I’ve realized there are some damaging misconceptions and myths out there, some perpetuated by old-line law firms with Intellectual Property (IP) departments and high overheads.
That’s why I put together a 20-minute presentation on how some so-called Unicorn Patents: From Filing to Issuance.
Cornerstone software patents for major brands we all know. It shows dates of when they filed an application and all subsequent dates of rejections, responses (i.e., narrowing of the invention), Examiner hearings, and finally an allowance. You’ll see how timelines can vary widely and what applicants need to go through to get that valuable crown jewel -the Intellectual Property patent.
I’m available to give this short and engaging presentation at your organization.
Rupak Nag; Intellectual Property Attorney
The Nag Law Blog
“A patent portfolio is a map of how a company thinks about where its technology is going.”
If you have a software-based invention, Contact me and we can discuss how the new guidelines can be used to draft a patent application that covers your idea and won’t be rejected for patent ineligibility under Alice/Mayo.
Comprehensive IP Protection
Mr. Nag has worked closely with CTOs and Engineering teams to ensure strategic and comprehensive IP protection and has collaborated with product teams to align IP protection with a company’s flagship services and products. Some of Mr. Nag’s areas of technical and IP experience include a wide array of software and Internet technologies, including human-computer interaction (HCI) design/volumetric computing, interactive TV and digital media services, mobile device and application security, anti-malware software, online advertising, online gaming, and encryption.
Rupak Nag began his career in 1995 as an intellectual property litigator at Silicon Valley law firms focusing on software, computer, and Internet-related patents. Over the last 24 years he has focused on advising and protecting IP for entrepreneurs, emerging growth technology companies, and multinationals. Mr. Nag has drafted and prosecuted over 300 US and foreign patent applications in software and hardware technologies. Most recently he worked as senior counsel for a mobile security software company in San Francisco where he built the entire patent portfolio to over 60 issued and pending US and foreign patent applications in embedded security, mobile device and application security, and in Internet of Things (IoT).