Is Your Patent Attorney Getting You the Right Claims? The first episode was about Litigation Quality Patent Claim Criteria. We went through the twelve, high-level claim criteria areas that you can use as a checklist to assess Litigation Quality Patent claims. Whether you’re getting those claims that have been through those considerations or not. And today, we’re going to ask the other half of that question: what about claim scope? Am I getting Litigation Quality Patent Claim Scope when I’m filing my patent application? How can you tell?  

If you missed it, click here to listen to episode 1.

Today we have a special Ask the Patent Attorney two-episode edition, answering the question: "Is my patent attorney getting me the right claims?" To answer that question, we’re going to break this up into two parts. The first part is the Litigation Quality Patent Claim Criteria, and the second part is the Litigation Quality Patent Claim Scope. You need to have both to assess and give you a proper answer to the question that maybe isn’t frequently asked but should be asked. If I were a client of a patent attorney, this is the top of my asked questions.

This is an important case from 2014. It is part of our post-Alice software series of Litigation Quality PatentCasts because it’s about an important decision that’s often cited in prosecution literature, in IPRs, and in litigation in favor of patent eligibility for software claims in certain circumstances. Alice is the Supreme Court decision, and it has set the bar and the two-step Alice test for analyzing whether claims are patent-eligible subject matter, or whether they’re too abstract, to be patentable.

In this installment of the Post-Alice Software Series, the Federal Circuit burns off some of the fog surrounding software claims at Step 2 of the Alice inquiry.  The case of SAP vs. Investpic appears to directly answer, for the first time, whether a claim can lack the “inventive concept” needed to survive Alice, even though the claims are “groundbreaking, innovative, or even brilliant” as well as non-obvious.  Now we know that an “inventive concept” cannot be found in the non-abstract realm, e.g., the claimed improvement can’t be an improvement to merely abstract “math.”