Special Counsel Joseph A. Saltiel Outlines Three Indicators That Can Help Determine if a Software Patent is Unenforceable in Bloomberg Law Article

May 14, 2019
Bloomberg Law

In an article published in Bloomberg Law on May 14, 2019, Special Counsel Joseph A. Saltiel discusses three indicators that can help determine if a software patent is unenforceable.

In 2014, the U.S. Supreme Court decided in Alice Corp. Pty. Ltd. v. CLS Bank Int’l that a two-part test must be applied to determine a patent’s enforceability. “Under this two-part test, a court must first consider whether the claims are directed to a patent ineligible concept such as an abstract idea, and if so, the court should consider whether the claim’s other elements transform the nature of the claim into a patent eligible concept,” explains Saltiel.

As a result of this decision, many software patents were challenged and found to be unenforceable.

The article discusses three indicators that help to determine enforceability, including software apparatus claims, specificity, and the importance of having software as the foundation of the invention.

Mr. Saltiel’s article “Three Indicators a Software Patent May Be Unenforceable” can be accessed on Bloomberg Law online.