On March 31, 2014, the United States Supreme Court will hear oral arguments in a case that could determine the fate of software patents in the United States. Recently, IBM filed an amicus brief at the United States Supreme Court in the case of Alice Corporation Pty. Ltd. v. CLS Bank International. While many attorneys contributed to this brief, former Solicitor General of the United States Paul D. Clement is the Counsel of Record on behalf of IBM.
I think it is fair to say that the IBM brief can be summarized as follows: ‘The abstract idea doctrine is unworkable.’ Bravo! If the Supreme Court cannot define the term “abstract idea,” which they have never done, how can it be at all appropriate for the Court to apply the doctrine as if it has meaning? At least with respect to software, there is also no uniform application of the patent laws, which at least conceptually should raise concerns of disparate treatment of those similarly situated.
Something needs to be done to once and for all acknowledge that software is patent eligible. Even having to say that and hope it is what ultimately happens is truly saddening in the year 2014. Software is all around us and empowers practically everything, and according to a Government Accountability Office (GAO) report from August 2013, somewhere between 50% to 60% of all patent applications filed deal in some way with software. Software is the very backbone of innovation and the fact that we have to wonder whether it is patent eligible more than 46 years after the first software patent issued is really an indictment of the judicial system as it relates to patent law and jurisprudence.
If you look at a well-written patent application that appropriately describes the technology that powers a computer-implemented process, there will be a lot of tangible components (i.e., “hard”—ware) discussed and required in order for the computer-implemented process (“soft”—ware) to actually work. Those familiar with the technical reality of software also know that any computer-implemented process that can be accomplished using software can also be accomplished using logic gates. Indeed, logic gates are the foundation for all digital electronic circuits and microprocessor-based systems. Thus, software can be explained on its core level as a process for manipulating logic gates. See Software Patents: Are they really “Soft” –ware?
The reason the abstract idea doctrine is unworkable is because the Supreme Court has never defined what is an abstract idea. The Supreme Court has treated the term “abstract idea” much as they have the term “obscenity”; they know it when they see it. Such a level of subjectivity leads to chaos, which is exactly how the judges on the Federal Circuit can manage to find themselves evenly split on the issue of whether software is patent eligible. The Supreme Court abhors bright line rules unless they are the ones who announce them. Such an irrational fear of certainty and predictability is curious given how those concepts are so fundamentally important to a functioning judicial system. Still, if they don’t like bright line rules that everyone can follow as announced by the Federal Circuit, they at least owe us a workable test that they are willing to endorse.
On page 22 of the IBM brief, Mayo v. Prometheus is taken on directly. It is true that virtually everyone knowledgeable about the claimed “innovation” in that case would have found the claims invalid, but invalid either under 102 for lack of novelty or under 103 because the claimed invention was obvious. So yes, there is a justifiable concern about foreclosing future innovation, but that is NOT a topic appropriately addressed under 101.
The question under 101 should be whether there IS an invention. If there is an invention with the requisite tangible description, then the law should force the analysis to push forward to 102, 103 and 112. A tangible requirement to the claimed invention works to protect against the patenting of ideas. The fact that an invention is a pioneering invention, fundamentally important or widely used is of no importance under 101. I would think the Supreme Court would understand this after their decision in KSR, which presumably wanted to discourage trivial contributions from being patented. One would have thought by discouraging the trivial, the Supreme Court was exalting the foundational, pioneering invention.
Ideas, laws of nature and natural phenomena are not inventions. If you have an invention, such as a computer-implemented process, it is and properly should be patent eligible. Analysis should push forward primarily to 112 to first see if the invention has been adequately described. If there is a technological disclosure, then patent examiners should evaluate novelty (i.e., 102) and obviousness (i.e., 103). It is simply inappropriate to weed out an entire class of invention, particular one that is the very backbone of innovative activity, under an ill-defined and ill-conceived 101 analysis that posits that claims that clearly recite tangible limitations are still somehow abstract.
For more information please see:
- Patent Eligibility in Unsettled Times
- Three Years After Bilski: Patentability of Business Methods
- Software Patents, A collection of Articles