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This topic contains 1 reply, has 1 voice, and was last updated by  Hardeep Sodhi 2 years ago.

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    Hardeep Sodhi

    This discussion was sparked off by :


    The position in US of A seems to be :

    • We need a legislative fix to 101

    WHAT is 101 :

    35 U.S. Code § 101 – Inventions patentable

    ” Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

    Essentially, the issue is whether the invention is an “abstract idea ” (which is unpatentable ) or can be considered as one of above and hence, patentable.

    In three landmark cases : Gottschalk v. Benso, Parker v. Flook, and Diamond v. Diehr – the US Supreme Court held that abstract mathematics and algorithms were unpatentable.

    In 2010,  the USSC ruled in Bilski v. Kappos that Bernard Bilski’s patent application for a method of hedging the seasonal risks of buying energy is an abstract idea and is therefore unpatentable. However, it also said that business methods are not inherently unpatentable, and was silent on the subject of software patents.

    • According to Schecter, since Alice, some 65.75% of patents challenged in the district courts have been invalidated under 101, with the success rate even worse at the Federal Circuit.

    Since Alice 91% of patents have been invalidated under 101 at the Federal Circuit, with the Court’s decision in DDR Holdings representing the sole case where a patent eligible computer implemented invention was found to exist.

    WHAT is the Alice Decision ? :


    Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014), was a 2014 decision of the United States Supreme Court about patentable subject matter (patent eligibility). The issue in the case was whether certain claims about a computer-implemented, electronic escrow service for facilitating financial transactions covered abstract ideas ineligible for patent protection. The patents were held to be invalid because the claims were drawn to an abstract idea, and implementing those claims on a computer was not enough to transform that idea into patentable subject matter.

    WHAT is the DDR Holdings case


    Essentially, DDR Holdings, LLC v. Hotels.com, L.P. is the first United States Court of Appeals for the Federal Circuit decision to uphold the validity of computer-implemented patent claims since the Supreme Court’s decision in Alice Corp. v. CLS Bank International. Both Alice and DDR Holdings are legal decisions relevant to the debate about whether software and business methods are patentable subject matter under Title 35 of the United States Code §101. The Federal Circuit applied the framework articulated in Alice to uphold the validity of the patents on webpage display technology at issue in DDR Holdings.

    Essentially DDR had a patent on a computer program that generated a webpage with the same “look and feel ” as of the sender’s website although the user was actually on a receiver’s website from where he could purchase various products, the sender getting a commission ( concept common in affiliate marketing ).

    The decision involved two points :

    • Step 1 : Abstract or not ?

    Judge Chen acknowledged that the invention could be characterized as an abstract idea, such as “making two e-commerce web pages look alike,” but also noted that the asserted claims of the ‘399 patent “do not recite a mathematical algorithm . . . [n]or do they recite a fundamental economic or longstanding commercial practice….

    • Step 2 –  Inventive or not  ?

    In spite of the business-related nature of the claims (retaining or increasing website traffic) and the fact that they could be implemented on a generic computer, the court highlighted that the claims did not simply take an abstract business method from the pre-internet world and implement it on a computer. Instead, the claims addressed a technological problem “particular to the internet” by implementing a solution specific to that technological environment and different from the manner suggested by routine or conventional use within the field.

    Read, correct me and add on please ! What is your experience ? How do you draft software inventions ? Examples of successes / failures with reasonings ?

    I will be adding the Indian experience shortly…..

    Meanwhile , here is a chart that shows – as of 2014 – the number of US trial trial court rulings that held that a patent was invalid based on section 101 of patent law. Evidently, it has become much more common for the courts to rule that an invention isn’t eligible for patent protection.



    Hardeep Sodhi

    How Alice Has Crippled the Patent Law

    Very nice presentation with quite some compelling data by Robert Sachs, Partner Fenwick and West LLP

    ” At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. At some level, “all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.“ Alice Corp. v. CLS Bank ”

    Thoughts invited !




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