Russ Emerson in Law360: 7 Ways To Survive An Alice Patent Challenge

The Supreme Court in June 2014 struck down Alice Corp.'s patents on computerized trading methods, holding that abstract ideas implemented with a computer cannot be patented under Section 101 of the Patent Act. As a result, the courts and U.S. Patent and Trademark Office examiners are taking a tougher stance against these patents.

"The major challenge companies face in light of Alice is the challenge of uncertainty," said John Russell Emerson, a partner at Haynes and Boone LLP. "As the Alice court itself admitted, almost any invention can be described in abstract terms. Thus, the [test] often collapses into a search for an inventive concept, which is a necessarily subjective test for which we have no meaningful guidance."

But attorneys say that prosecuting and asserting software related patents isn't a lost cause. Rather, the process of securing and litigating these IP rights involves a more calculated approach.

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