Time to re-think patent strategy

As virtually everyone interested in patents already knows, the Supreme Court recently agreed to hear [pdf] a second patent case during its current term. This latest case involves the shockingly unresolved issue of the patentability of software [pdf]. As with the last instance of the Supreme Court taking a patent case, predicting the Court’s ruling is better left to others, but the recent history of the Court’s patent jurisprudence makes unlikely a decision expanding the scope of what can be patented.

Reasonable minds can differ as to the ideal standards for patentability and the strength of patent protection as a matter of public policy. On the other hand, a reasonable person would struggle to deny that patents have become harder to obtain and enforce over the past few years. The Supreme Court’s recent interest in patent law has mostly had the effect of making allowances of applications more difficult and invalidation of issued patents easier. Congress passed major changes to the Patent Act that moved the US to a ‘first-to-file’ patent system and created new procedures to challenge patents. Meanwhile, any gathering of patent attorneys (or, as we would call it, “a grouping of at least two patent attorneys”) will quickly become a discussion of the increasingly aggressive examination our patent applications are receiving, with bragging rights going to whoever has received the obviousness rejection combining the most references. All in all, few US patent attorneys have experience with patents being this hard to obtain and enforce. 

If ever there were a time to commence re-thinking a business’s patent strategy, this is that time. The re-thinking may not be able to be completed until the Supreme Court has its say next year, of course, and any strategy will still have to be adjusted as the law evolves in light of legislation, other court decisions, and Patent Office practices. Still, a patent strategy formulated in 2010 already needs to be updated to account for changes to the law, as does a patent strategy formulated in 2009 or 2006. A perfectly reasonable, or even utterly brilliant, patent strategy from 2000 could be unproductive and ill-advised under today’s law, never mind whatever the law may be by next summer.