Not a lot closer to understanding when software is patent eligible


“There should be no serious question that computer-implemented inventions such as software constitute patent-eligible subject matter under § 101,” Paul Clement wrote in a brief filed on behalf of IBM to the Supreme Court in 2014. Ultimately, the IBM brief would argue that the abstract idea doctrine is unworkable, which it is. Sadly, nearly 30 months after the Supreme Court’s landmark decision in Alice v. CLS Bank we are not a lot closer to having a working understanding about when and under what circumstances software is patent eligible.

Yes, the Federal Circuit has started to issue rulings that give hope, but they also then issue non-precedential rulings that seem to just string together buzzwords too. They also continue to allow the invalidation of patent claims without a claim construction, which is antithetical to pretty much the whole of patent law. See No claim construction, CAFC rules claims ineligible.

We know that the Supreme Court did not say that software is patent ineligible, and we know that software patents are referred to specifically in the Patent Act in a variety of locations. In fact, when Congress passed the America Invents Act (AIA), a prohibition on the patenting of tax strategies was included. Also included, however, was a specific caveat that said that the tax strategy exclusion did not pertain to computer programs employing a tax strategy, which seems rather conclusive proof that Congress understood software to be patent eligible and wanted to specifically keep software, at least tax-related software, patentable.

We also know that when the innovation focuses on improvements to the functioning of a computer, that leads to a finding that claims are patent eligible. And we have learned that even generic components can lead to a patent-eligible claim when they operate in unconventional ways. See A Guide to Software Patent Eligibility. Unfortunately, the Federal Circuit still views patent eligibility as a matching game, where they look at the claims and then determine which one of the precedential cases the claims are most like and proceed with the analysis from there. Such a matching-test is hardly repeatable and not particularly sound, or intellectually satisfying. See discussion of Enfish.

Unfortunately, real mischief has taken place since the Alice decision by the Supreme Court. The Federal Circuit, numerous district courts, the Patent Trial and Appeal Board (PTAB) and patent examiners at the United States Patent and Trademark Office (USPTO) have used Alice to reject software patent claims as being patent ineligible. Indeed, the Alice decision has infused a great deal of uncertainty into the law of patent eligibility. While there is reason for optimism, there is also reason for concern. Gone are the days of cheap software patents. The amount of information that needs to be put into a patent application is simply too great.

It is only a matter of time before we have greater clarity on software patent eligibility, and that clarity should result in software being more readily patent eligible. In the meantime, however, clients need to make decisions. What we do know is that the law of software patentability has changed over the last 30 years, about every two to three years. Given that a patent application filed today will almost certainly not receive a First Office Action on the Merits for two to three years, that means the law will evolve at least once, perhaps twice, before new patent applications filed today are even examined.

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