IP: Supreme Court to determine patentability of software-implemented inventions

The Supreme Court will review a split en banc decision by the Federal Circuit which held that claims drawn to abstract ideas implemented using a computer are not patentable subject matter

On March 31, 2014, the U.S. Supreme Court will hear oral arguments in Alice Corporation Pty. Ltd.. v. CLS Bank International, et al., a case involving the issue of whether claims to computer-implemented inventions are directed to patent-eligible subject matter.

Section 101 of the Patent Act provides that “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” may qualify as patent eligible subject matter. The Supreme Court has recognized the broad nature of these subject matter categories and has thus created three specific exceptions to the categories of patentable subject matter, namely “laws of nature, natural phenomena, and abstract ideas.” Thus, in the Alice case, the Court will look at whether an “abstract idea” may be included in a patent claim and still result in a determination of patent-eligible subject matter of that claim under Section 101.

Contributing Author

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James R. Klaiber

Jim Klaiber is a partner in Pryor Cashman’s Intellectual Property Group and is experienced in all aspects of patent law including transactions, litigation and client...

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Contributing Author

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Ryan S. Osterweil

Ryan Osterweil is an associate in Pryor Cashman’s Intellectual Property Group.

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