The real question is: are you applying for a job or are you trying to license your technology? In all likelihood, a blended negotiation is probably not going to happen unless: 1. you're looking for work in academics/advanced research or 2. you're a pre-eminent engineer/scientist being hired for your contributions in your inventive space.

If you're applying for a job, then the recruiter probably doesn't want to hear your invention pitch. The recruiter probably doesn't care about your patented stuff other than perhaps an aggregate count: e.g., I'm a named inventor on 3 million patent applications. You should be focused on what your qualifications for a job are.

If you're afraid that once you get the job that you're going to be deprived of a subsequent royalty stream, you should review your employment contract and should just flag that as a concern of yours. I suspect you're unlikely to get much value for your IPs from your employer, but at least the paperwork will be clear as to rights to use, the existence of the inventions prior to employment, etc.

If you're talking about trying to license your technology, then you need to talk to the right people. Probably their patent attorney or the person in charge of in-licensing technology. This is usually a protracted negotiation.

Last point, on your moral quandary: your patent probably doesn't stop you from deploying your full efforts at a job. It might stop you from implementing your own patented invention. But, on that point, you're the gatekeeper of your own invention. If you elect to deploy your patented invention as part of your regular work, you shouldn't expect compensation for it unless your employer asks you to.

Patent/IP Attorney chiming in.

You can copyright maps and manuals

Sure. You're very specific expression of both. You don't get to copyright the "facts" in either case. Everyone is free to copy the factual aspects of both maps and manuals. The distinction is an important one. And while not addressing maps and manuals directly in their petition, Google takes on the concept: you can write a book about art, but you don't get to stop other people from doing that art.

You can draw (and potentially get a copyright for) an outline of the world, but you can't stop other people from doing the same.

Google's argument about the API isn't all that much different: you can copyright an implementation of the API, but you don't get a copyright for the "facts" of the API: function names, arrangement, etc. The argument is that copyright, by statute, expressly does not extend to "extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." (17 USC 102(b)). This is not a trivial argument. It's also pretty important because if Oracle/Federal Circuit are correct, then you can have de facto patent protection for a century without any of the procedural protections such as examination.

You mean that the Federal Circuit actually followed Congressional intent and the statutory law (35 USC 101) -- apparently against the wishes of the Supreme Court.

Foolishness. Section 101 is broader than you give it credit for. Patent attorneys love to overlook the language.

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

One may very well look at the Alice patent (or any of a whole series of the business method/software cases) are realize that those claims are drawn to things that the patentees neither invented nor discovered, were not new at the time, etc. What's more Section 101 is entirely permissive "may obtain" which is hardly a requirement: shall or is entitled to, etc.

And, in any case, Congress is bounded by the Constitution's copyright clause: "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." (Art. I, Sec. 8, Cl. 8). Extending patent rights to abstract ideas, general principles, etc., would arguably be unconstitutional. So, to avoid the constitutional question, it's best to resolve the broad language against that patentability.

... at trial, yes. Not at the USPTO or before the PTAB.

I rarely care about non-issued patents, other than my own. Patent examiners can do their thing. Alice gives them a tool now too.

IPRs are a possible strategy. But people don't willy-nilly file those either. They're more part and parcel of modern patent litigation now to get a stay and hopefully wreck claims. A good IPR is still 5 figures.

And in KSR, SCOTUS pushed that way back. Now it's actually quite easy, unless the claims recite an element that you just can't find a reference for, anywhere.

And that's still an issue for mid- to late-90s patents. Words are different. Language is different. Experts and lawyer arguments are expensive.

Plus, a wealth of everyday computer stuff from the 90s is still pretty hard to come by or expensive or time consuming to retrieve.

That'd be an easy 103 rejection: you can prove it's been "done previously," right? You can prove that the platform existed previously, right? Where's the problem?

If that's all that was required, woo-boy.

How do you define "actually inventive"?

Here are the questions I ask when contemplating patent filings, post-Alice, for a software method (or computer implemented method):
* Can I reasonably determine the bits and pieces you put together a specific solution to a specific problem based on your claims?
* Do the claims give me all of the pieces of the puzzle or does it give me a flowchart?
* And, to entirely avoid an Alice question, are you using generic bits of technology for their ordinary purpose to solve an old problem the old way?

"Good" answers to these questions should avoid a 101 issue.

of which I've to actually see an example

Let me quickly respond to that point too. One recent victim (at least at the lower courts) was this patent: http://www.google.com/patents/.... The district court found the claims to upselling to an online buyer invalid under the Alice case. http://www.law360.com/articles...

One of the important things to realize is that that actually doesn't matter. The fact that the practice had been done in the real world before did, though. Merely gussing-up the language with technological tools didn't make it patent eligible. The court never gets to the issues under Sections 102 (anticipation) or 103 (obviousness) of the patent laws.

Joe Mullin at Arstechnica has a decent piece on the case: http://arstechnica.com/tech-po...

Those patents - of which I've to actually see an example - would already be invalid under 103:

I so hate this argument. Sure, they could be. The road to a 103 invalidity is an expensive and often arduous task that is often left to a jury. What's more, its met with a high burden and a presumption of validity. The Federal Circuit and patent lawyers have done a marvelous job making invalidity under 102/103 all but impossible except in the most extraordinary cases.

The point is: they shouldn't have been patent eligible in the first place. You can't take something done previously, stick it on a platform that's used for it's conventional purpose and suddenly you're in patent-eligibility land.

Now the burden, under 101, is for the inventor to show that which they did was actually inventive.

Good patents shouldn't have this issue. 101 should be a very, very low hurdle.

I read Patently-O. Thank you for all that you do. I'm also a patent attorney. I work in-house at a software company where I'm Chief IP counsel. I cannot help but think when reading patently-o (and PatentDocs and IPWatchdog and others) is that the readership is so skewed to patent attorneys who view the world as fundamentally formed around patents. When a patent attorney like myself makes any argument about the ludicrous nature by which the scope of patents has grown, either in comments or otherwise, it is mostly met with cries of being part of the anti-patent brigade.

What Alice has shown to me is that the generalist legal world (e.g., the one in which the SCOTUS lives) view patents with much, much more skepticism. In my opinion, rightfully so. Patent attorneys get their undies in a bunch about Alice-like precedent "violating" the territories of 102 and 103. But that misses the forest for the trees.

As you suggest, Alice is in but a long line of cases where the Supreme Court looks at the forest, not the trees. Recognizes the absurdity and attempts to restore some sanity.

Alice is a big deal. It's already dealt tough blows to some patents in currently pending cases. This is mostly a good thing. And the patents that Alice affects most are sort of the worst of the worst.

I want to address the last point:

Alice to turn software patents into 'draftsmen's art because as you and I have seen over the years, every time there's a court ruling it just means that you have to word the patent claims differently.'

This may well be the case. But I don't see that as a particularly bad issue. Among other things, the worst offenders were patents that issued between 1996 and 2006 where there is a huge number of "do such and such old thing on a [computer | web | network| mobile device]" as if the "such and such old thing" was suddenly now a patentable thing by virtue of a new platform. Alice will largely undo those patents.

I also think that the "draftsman's exercise" is likely to bring added meat to claims. It might not sound like much, but every single word that gets added to a claim is one more point of possible differentiation.

Agreed that it's not in the summary, but as you correctly note, it's just a "summary". Anyone who reads the underlying blog post will read this among the facts on which the court based its opinion: "The public was allowed to search by keyword. The search results showed only the page numbers for the search term and the number of times it appeared; none of the text was visible."

So those readers who RTFA will be in the know.

Don't I wish.