Affirming the Patentability of Software

posted by in Intellectual Property February 27, 2014
Feb 27

The Supreme Court next month will hear oral arguments in CLS Bank v. Alice Corp., an important case that could go a long way toward affirming that the breathtaking software innovations transforming the world around us are patentable just like any other form of innovation as long as they meet the standard tests of being new, useful, non-obvious and adequately described.

The debate about software patentability has been contentious in recent years, partly because it has been exacerbated by questionable inventions masquerading as software patents. Take the patents asserted by Alice Corp. They simply describe a well-known process for settling financial transactions — an abstract idea that has been around for centuries — and claim that performing the steps on a computer is an invention. The concept of performing intermediate settlements on a computer adds no substantial value and does not make the abstract idea patentable, so the Court should find Alice’s patents invalid.

But it is just as plain that true software innovations are rightfully eligible for patent protection — and must continue to be — as BSA argues in an amicus brief filed today with the Court. Affirming that fundamental point and clarifying the test for determining what constitutes a true software innovation will help ensure the proper functioning of the US patent system in the digital age.

Software engineering is like any other engineering discipline, and the inventions are just as worthy of patent protection. It takes significant investments of labor and capital to produce software innovations, and they add tremendous value to the economy and modern life. Consider, for example, how software innovations help patients with chronic diseases monitor and manage their conditions; how cities use software to control traffic patterns; and how software lets people with good driving habits save money on their insurance in real time.

Beyond those modern realities that people actually care about, however, is the fact that software innovations are generally patentable under Title 35, Section 101 of US law. That’s because software patents describe processes for accomplishing particular results — which is the basis for patent eligibility. The Supreme Court validated this point as recently as 2010 in its Bilski v. Kappos decision.

Section 101 applies to software claims the same way it applies to innovations in other fields — but the legal basis for software patentability does not begin and end there. US patent law includes additional requirements that are much harder to meet before a patent may be granted. The amicus brief BSA filed today walks through these and other important legal points in detail.

The bottom line is that while the patents at issue in the CLS case might deserve to be ruled invalid, true software innovations must continue to be patentable. This case gives the Supreme Court an opportunity to clarify that point.

Leave a Reply