We Need to Manage Patents Holistically in the Wake of Alice
Alice is a reminder to patent managers to take a holistic view of patents to make good patent procurement and enforcement decisions. As a patent manager you want to get inputs that borrow from your prosecution, litigation, post-grant and licensing experience. Here are some reasons why:
1. Avoid Myopic Patenting
Recently, I was asked to provide input on claims drafted by a patent prosecutor for a strategic patent application. He was not happy with me when I let him know that they were likely not 101-eligible. He let me know that he was skeptical because he had drafted and issued many claims just like them over the past decade. This was an attorney who knew all about the Alice decision, yet without experience in litigation or in post grant (e.g., CBM) he had no basis to appreciate that his claims were not going to survive either.
have had a lot of challenges in the past decade. Patent managers have to view patents from several vantages, including prosecution, litigation, licensing, and post-grant. It is more important than ever to take a holistic view of patents to guide patent portfolios in a direction that is meaningful in both the short and long term.
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