Sunday, July 29, 2012

Software Patent Eligibility - Ending 40 Years of Controversy?

Today, one of the most controversial topics in US patent law is whether and when software related inventions are patent eligible.

The Federal Circuit opinions in July 2012: CLS Bank International v. Alice Corporation in favor of patent eligibility and Bancorp Services v. Sun Life Assurance Company of Canada against patent eligibility illustrate the controversy today.

Professor Crouch's article Ongoing Debate: Is Software Patentable? notes the different results seem to stem from differences in how to construe what is the invention (by the claim as a whole or by its "core inventive concept") and the frustration of watching the controversy remain unresolved after 40 years of case law. (Groklaw's Does Programming a Computer Make a New Machine? citing In re Prater in 1969 suggests this controversy goes back at least 43 years).

Because of the uncertainty associated with a Supreme Court that finds it difficult to affirm the Federal Circuit (See WildTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101), the PTO community (applicants, attorneys, and examiners) should not keep chasing down if a claimed invention (or the slippery "core inventive concept") is an abstract idea.

Instead, let's address software patentability under tests that are readily applied as recommended by Director Kappos' Some Thoughts on Patentability under 35 USC 102 (novelty/statutory bars), 35 USC 103 (obviousness), and 35 USC 112 (written description, enablement, and definiteness), and recast the abstract idea exception to 35 USC 101 as an overclaiming test as proposed by Professors Mark Lemley, Michael Risch, Ted Sichelman, and Polk Wagner in the Stanford Law Review article Life After Bilski.

Copyright © 2012 Robert Moll. All rights reserved.