HOPE FOR SOFTWARE PATENTS IN THE POST-ALICE LANDSCAPE

The courts have long been attempting to establish an appropriate framework with which to handle software-based inventions. Even before the Supreme Court decision in Alice Corp. v. CLS Bank International numerous tests have been created to determine whether software qualified as patentable subject matter. Since Alice patent examiners and courts have stumbled over determining what makes a claim an abstract idea ineligible for patenting often at the detriment of software-based inventions. With Enfish, LLC, v. Microsoft Corporation the Federal Circuit has provided guidance to help patent software methods.

Enfish reiterates the Supreme Court’s stance from Alice and acknowledges that some improvements in computer-related technology are “undoubtedly not abstract.” The Federal Circuit then stated that software can make “non-abstract improvements to computer technology just as hardware improvements can.” This highlights Enfish’s focus on improvements to computer functionality regardless to whether the improvement is due to hardware or software. Thus, software-based inventions may be found as patentable even when able to run on a general-purpose computer.

The decision also serves as a caution when determining whether a claim is abstract idea. Warning that too high a level of abstraction can become “untethered from the language of the claims” Enfish concedes that an extreme abstraction can render any invention unpatentable.

Enfish also stresses the importance of the teachings in the patent’s specification. Looking to the disclosure the Federal Circuit found support for the allegations that the claims provided improvements to computer technology. Additionally, the disclosure served to guide the level of abstraction used to decide if the claims qualified as patentable subject matter.

With this decision the Federal Circuit has provided some guidance that inventors can use to ensure their software based-inventions are examined with the proper analysis. Drafting a patent application using the lessons from Enfish will help avoid some of the pitfalls that have threatened to engulf all software-based inventions. As the courts continue to recognize the patentability of software inventors within this technological area can be reassured that their inventions may be granted the appropriate examination by the United State Patent and Trademark Office (at least with regards to technological improvements to computer functionality).