Software Patents and Pokémon Go

In the last few years we have seen the rise in popularity of multiple software applications, with the latest and biggest example being “Pokémon Go” developed by NIANTIC, Inc. However, where there is a rise in popularity of a product, there is always an increase on the amount of copycats and counterfeits.

While in Europe there is a larger restriction for software patents, in the United States these restrictions are softer and the American Supreme Court has already issued several decisions concerning the matter.

The most notorious of decisions has been the Alice Corp V CLS BANK INTERNATIONAL where the court has stated “The mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent eligible invention. (…) Thus, if a patent’s recitation of a computer amount to a mere instruction to “implement an abstract idea” (…) that addition cannot impart patent eligibility”.

Since the American law is ambiguous and doesn’t directly mention software patents, applicants are left with a sense of uncertainty regarding the granting probability of said patents.

In fact, those concerns are highly justified since after the Alice Corp V CLS BANK INTERNATIONAL patent courts have invalidated about 66% of all software patents that reach said courts. To aggravate this situation, the U.S Court of Appeals for the Federal Circuit, has invalidated 95% of software patents that reach its competence. Furthermore, the Patent Trial and Appeal Board, commonly designated as PTAB, has invalidated 90% of patents in post-grant-reviews.

As such, although the US regulations do not prohibit the application of software patents, the common experience in this matter is that it is considerably difficult to have a successful software patent application and be able to exploit it freely and exclusively.

In the case in point, while Niantic owns 3 software patents that could potentially protect Pokémon Go from being copied by other companies, all 3 patents were filed before the 19th of June, 2014, which corresponds to the date of the Alice Corp V CLS BANK INTERNATIONAL decision, which completely changed the juridical value of software patents.

Because of this fact the patents granted to Niantic are vulnerable to being invalidated in an US court and other companies would be free to copy the software inventions to other projects of their own and ride the popularity wave started with Pokémon Go, without investing in R&D.

A good initial patent drafting strategy is thus crucial in order to have software patents granted not only in the US but also across the Atlantic, taking into account new case-law developments.