Today, most computer innovations relate to software, at least in some important ways, and the USPTO continues to issue at least some patents for software-related inventions. No one seriously believes software will become patent ineligible per se, although it is undeniable that there is now a much steeper hill to climb than there once was. The trick is to define the invention as providing a technological solution to a technological problem. See A Guide to Software Patents and Software Patent Eligibility at the Federal Circuit.
For now, there has been no definitive statement by the Supreme Court that software is, in fact, patent eligible, although the Court has recognized at least some software-related innovation as being patent eligible. See Diamond v. Diehr. The Supreme Court also continues to consider the invention at issue in State Street Bank to be patent eligible, even if the “useful, concrete and tangible result” test does not live on.
Unfortunately, much of the Supreme Court’s ruling in Diehr was overruled in Mayo v. Prometheus, even though the Supreme Court continues to prefer to operate under the notion that Diehr is still good law. Simply put, Diehr stated directly that there is no place for consideration of novelty when determining patent eligibility, and Mayo said quite the opposite. Therefore, how much of the Supreme Court’s ruling in Diehr remains “good” law remains questionable at best.
Notwithstanding, currently the chief hurdle to the patenting of software is the Supreme Court’s decision in Alice v. CLS Bank, which in conjunction with Mayo delivered the so-called Alice/Mayo framework. The Alice/Mayo framework requires the decisionmaker, whether a patent examiner, administrative tribunal or reviewing court, to ask and answer a series of questions before determining whether the patent claim in question constitutes patent-eligible subject matter.
The first question (commonly referred to as Step 1) is whether the patent claim covers an invention from one of the four enumerated categories of invention defined in 35 U.S.C. §101 (i.e., is the invention a process, machine, article of manufacture, or composition of matter?). If the answer to this question is no, then the claim is patent ineligible. If the answer is yes, the decisionmaker must move on to the next inquiry because the statutory test established by Congress is no longer the complete test for patent eligibility in the United States.
The second question (commonly referred to as Step 2A), where the Alice/Mayo framework truly begins, requires the decision maker to ask whether the patent claim seeks to cover one of the three specifically identified judicial exceptions to patent eligibility. Although there is no textual support for the creation of any judicial exceptions to patent eligibility in the Patent Act, the Supreme Court has long legislated from the bench in this area. At the moment, there are only three identified judicial exceptions, which are: laws of nature, physical phenomena and abstract ideas. If the claim does NOT implicate one of those judicial exceptions, then the claim is patent eligible.
In the case where the patent claim seems to include a judicial exception to patent eligibility, the final question (commonly referred to as Step 2B) asks whether the inventive concept covered in the claimed invention added “significantly more” than the judicial exception, or whether the claimed invention did not add “significantly more” and, therefore, was seeking to merely cover the judicial exception.
The judicial exception at play when computer-implemented inventions are claimed is the abstract idea exception. Unfortunately, the Supreme Court has refused to define the phrase “abstract idea,” pointing out in Alice v. CLS bank that they did not need to “labor” to define the term. Equally unfortunate, the Supreme Court has not defined the meaning of “significantly more.” Thus, the two critical terms of art in the Alice/Mayo framework have no accepted meaning, which is what leads to rather subjective determinations.
Many are not expecting much additional clarity. That is likely the primary reason the IPO has recommended legislative amendments to 35 U.S.C. 101, which would eliminate the abstract idea exception and largely (if not completely) overrule Mayo. Time will tell, but 2017 may be quite interesting on the patent eligibility front.