More On

IP: Is software patentable? A different perspective

Several software patents have been invalidated based on new scrutiny

Patentability under section 101 of the Patent Act has received a lot of attention in the past several years, particularly in the areas of business methods and biotechnology. The Supreme Court has touched these subjects relatively recently in the cases of In re Bilski and Mayo v. Prometheus. Many instances of software and computer-implemented subject matter have somewhat unfairly been dragged into the debate in part by virtue of the fact that many pure business methods have been carried out by, or couched in terms of, software and computer-implemented “systems.” This is unfortunate and has caused a broader than necessary scrutiny of some instances of computer-implemented subject matter patentability, which was once thought to be on predictable ground formed by well-established fundamentals of section 101. Indeed, a number of such software patents have been invalidated based on this new scrutiny. The Federal Circuit has recently tackled software patentability in a number of cases and in the process has muddied the waters, in large part due to factions within the circuit applying inconsistent philosophies, approaches and interpretations of the Supreme Court cases.  Perhaps in acknowledgement of the recent mess it has created, the Federal Circuit has recently granted en banc review of a case dealing with a data processing invention in CLS Bank Int’l v. Alice Corp. Hopefully, this will be an opportunity for clarity. In the meantime, however, one can obtain a “gut check” for patentability by borrowing concepts of industrial applicability from European patent laws and using them for a different perspective in gauging abstractness.

It is clear that abstract ideas and laws of nature are not patent eligible subject matter. This statement of the law remains a fundamental starting point for determinations of patentability. When applied to software, it gave rise to the position held by some that software per se is unpatentable as mere mental steps under section 101. This position has been the primary motivation behind claim formats that move the subject matter in a direction away from the abstract, such as “computer-readable medium,” “system” and “computer-implemented method” claims. However, some courts tend to focus on the underlying invention rather than the format of the claims. Ignoring the propriety of such analysis, it does nevertheless force one to scrutinize the inventive concept for abstractness. This is where industrial applicability can provide useful guidance.

In many foreign jurisdictions, industrial applicability or industrial application requires an invention to be susceptible of industrial application, i.e., an invention that can be made or used in some kind of industry. This is a concept that generally parallels section 101 under U.S. patent law. However, a particular aspect of the industrial applicability standard as applied by the European Patent Office suggests that there must be some "profitable use" for which the invention can be employed, invoking a “commercial usefulness” component. These observations invoke a concept of patentability based on solutions to problems in a particular industry, somewhat akin to secondary considerations for obviousness under U.S. patent law.

Applying this concept to software subject matter, it is the application that matters. For example, software steps merely calculating or determining some result from an algorithm without application of that result is abstract and will not be patentable. On the other hand, software steps that include an application of a result or determination may or may not be patentable, depending on the particular application. Although not an exclusive determining factor, if the application is “industrial,” i.e., has a profitable use or otherwise provides a solution to a problem in a particular industry, chances are pretty good that the software is patentable. At the very least, industrial applicability fosters a mindset for a useful perspective for testing patentability of software and computer-implemented subject matter in the U.S.   

Contributing Author

author image

William Lenz

William J. Lenz is a partner at Neal, Gerber & Eisenberg LLP and represents clients in a wide variety of intellectual...

Bio and more articles

Join the Conversation

Advertisement. Closing in 15 seconds.