Are Software Patents Dead?

By: Jim Dossey, MS, MBA, JD, Patent Attorney

Software patents are not dead, but they are on life support. On June 19 th, 2014, the Supreme Court decided Alice v. CLS Bank, a case focused on a core question concerning patentability of software…. Is software patentable subject matter?

Section 101 of the United States Code Title 35 defines what types of subjects are patentable. Section 101 defines patentable subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof…" Over time, courts have interpreted Section 101 patentability to exclude laws of nature, physical phenomena, and abstract ideas. For example, a software program, by itself, has never been patentable subject matter because it is essentially an implementation of an abstract idea.

Prior to Alice, patent practitioners typically transformed software programs into patentable subject matter (and not abstract per se) by combining software programs with a physical computer implementation. In the late 1990's and early 2000's, many patents were obtained for performing activities on computers or the internet that people have been doing for centuries. Alice rejected these types of software patents; software patents can no longer be obtained by combining software programs with generic computer hardware.

Under Alice, patent claims must provide an element or combination of elements that is "sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [abstract concept] itself." After Alice, the key question is what is "significantly more" that can transform an abstract (not patentable) software application into patentable subject matter.

We do know what does not qualify as "significantly more":

  1. Stating an abstract idea and adding the words "apply it"
  2. Adding well known, routine, conventional activities
  3. Limiting to a particular technological environment
  4. Mere instruction to implement an abstract idea on a generic computer

We also have some ideas on what will qualify as "significantly more":

  1. A "new and useful" application of the abstract idea
  2. Incorporating an abstract idea into an improved industrial or technological process
  3. Incorporating an abstract idea into a process that improves the functioning of a computer itself

In its Alice decision, the Supreme Court unfortunately did not provide well-defined standards for what qualifies as an "abstract idea" or "significantly more." Although it is certain that inventors can still obtain valuable patents for software, it is not yet clear what distinguishes a patentable software patent application from an unpatentable one.

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Dossey & Jones can help you obtain patent protection for your invention!

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