Patent practitioners and clients alike have long sought
clarification of when methods and systems embodied in software would be
considered patent eligible, and when such methods will be viewed as directed to
non-statutory subject matter for which patent protection is not available. It
was hoped that an eagerly awaited Supreme Court decision in Alice Corp. Pty. Ltd. v. CLS Bank
International, et al. (Alice Corp.)
would provide such clarification. It did not.
What constitutes an
“abstract idea?”
Though the statutory language that defines patent-eligibility
is extremely broad, the courts have held that abstract ideas are one of the “basic
tools of scientific and technological work” and that [M]onopolization of those
tools through the grant of a patent might tend to impede innovation more than
it would tend to promote it.” The courts have held that abstract ideas are fundamental
truths that are “part of the storehouse of knowledge of all men … free to all
men and reserved exclusively to none.”
Without ever clearly defining what an abstract idea might
be, in a string of cases leading up to the Alice
Corp. decision, the courts concluded that various processes and systems
that were implemented in software were directed to an “abstract idea” and thus,
constituted patent-ineligible subject matter.
While recognizing that computer implemented inventions are
patent eligible just like any other machines and, that once programmed, a computer
is a special purpose device just like any other machine, the courts have
struggled with computer implemented inventions where the invention involves
some form of calculations, the display of a result and data manipulation within
a computer without more tangible results that extend beyond the execution of
the computer software.
The boundaries of patent-eligibility with respect to
inventions embodied in computer software have remained unclear and decisions of
the courts have been difficult to reconcile. Furthermore, while holding that
computer related inventions that embody an abstract idea are patent ineligible,
the courts have never clearly defined what constitutes an abstract idea.
How is patent
eligibility determined?
The Supreme Court in Alice
Corp. stated that a two part test should be employed to ascertain whether
claims are directed to patent-eligible subject matter. First, a determination must be made as to whether
the claims are directed to an “abstract idea.”
If the claims are directed to an abstract idea, an examination must next
be undertaken to ascertain whether the claims contain an “inventive concept”
sufficient to “transform” the claimed abstract idea into a patent-eligible
application.
The application of this test, however, in practice, is
problematic. In the recent cases the courts have looked at the patent claim in
question and distilled it into an “abstract idea.” In this exercise, however, the courts have often
ignored specific claim limitations and have focused on a high level objective
of the claim, even if the patent claim could not be asserted at the level of
breadth of the courts abstraction. In short, the conclusions reached by the
courts regarding abstractness at times appear subjective and arbitrary.
In the Alice Corp.
case, the Supreme Court stated that the involved claims were “abstract” because
they were similar to claims considered in a prior case decided by the Court. Such
logic provides little guidance to a practitioner that is attempting to assess
whether a specific subject would be viewed as “abstract” if not directly analogous
to subject matter previously considered by a court.
Under the second part of the two part test discussed by the Alice Court, one must examine the claim
to determine whether it contains an “inventive concept” sufficient to
“transform” the claimed abstract idea into a patent-eligible application. The
Court stated that this process requires more than simply stating the abstract
idea while adding the words “apply it.” However,
the Court never defined what type of “transformation” would establish a
qualifying “inventive concept” under the stated test. A review of recent cases suggests that the
second part of the two part test is more akin to a test based on obviousness
rather than one directed at patent eligibility under the patent laws.
Key takeaways
The Court intentionally did not enunciate a rule that
precluded patentability of inventions embodied in software, but left the boundaries
of patent eligibility ill-defined. Nonetheless, there are several takeaways
from the Alice Corp. decision:
1. Inventions that are solely embodied in
software and simply display an output, manipulate data, or involve a
calculation may be viewed as patent-ineligible. However, even in this category, prior cases would suggest that there are
exceptions.
2. An invention claimed as a series of steps
performed by computer software that are conventional steps recited at a high
level of generality or well-known steps are not likely to be viewed as
providing an “inventive concept” and thus, are likely to be held to be patent ineligible.
3. When an invention is embodied in
computer software, one must be able to clearly articulate an “inventive concept.” Patent eligibility will not rest solely
on the use of a computer to implement an otherwise known method or facilitate
the operation of an otherwise known system.
The software must do something other than what software running on a
general purpose computer is known to do.
4. Finally, if a claim is directed to
subject matter that is viewed as being “abstract,” the claim will not be
patent-eligible simply because it is limited to a particular technological
field or application.
As with any inventions for which patentability is uncertain,
one must weigh the potential value of obtaining patent protection and the attendant
costs associated with such efforts against the risk that patent protection may
be unavailable. For inventions that are embodied solely in software, the “clarifications”
provided by Supreme Court in the Alice
Corp. decision offer little new guidance to the practitioner and client as
to the boundaries of patent eligibility.
As with many such issues, a determination regarding
patent-eligibility is highly fact dependent.
The details regarding the specific software system for which patent
protection is desired in many cases permit a more informed view regarding
patent-eligibility.
