Alice: Another (small) step on the way out of Wonderland

While the courts may be inching toward greater clarity and definition in patent law, such reform will continue to move incrementally

On June 19, 2014, the U.S. Supreme Court unanimously decided a closely watched software patentability case, Alice Corp. Pty. Ltd. v. CLS Bank International. While many believed Alice held some potential to address widespread confusion over the types of software that can be patented—and therefore had the potential to make a dent in the proliferation of litigation in this space—the Court instead leaned on reasoning and legal rules established in prior decisions in holding that patents Alice Corp. had asserted against CLS were invalid for claiming non-patentable subject matter. Specifically, the patent claims were found to be invalid because they were drawn to an abstract idea, and “merely requiring generic computer implementation failed to transform that abstract idea into a patent-eligible invention.” In other words, if the claim was a pre-existing idea, simply implementing software in a “purely conventional way” is insufficient to make it patentable. To be patentable, an inventive concept is necessary, something “significantly more than an instruction to apply the abstract idea.”

While the Supreme Court did provide us with additional guidance in how to determine a patentable software invention versus a non-patentable abstract idea, Alice gave us no real new law and no real new test that might provide clear and distinct standards regarding the patentability of computer-implemented inventions.

Mallun Yen

Mallun Yen is executive vice president of RPX Corporation. She can be reached at

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