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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.

Contributing Author

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William Lenz

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

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