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Affirming the Patentability of Software

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.

Victoria Espinel


Victoria Espinel is a respected authority on the intersection of technology innovation, global markets and public policy. She leads strategic efforts that help shape the technology landscape in 60 countries through work in BSA’s 10 global offices.

Espinel also serves as the President of the BSA Foundation. is an independent and nonpartisan international research organization created to help policymakers and the broader public better understand the impact that software has on our lives, our economy, and our society.

Espinel served for a decade in the White House, for both Republican and Democratic Administrations as President Obama’s advisor on intellectual property and, before that, as the first ever chief US trade negotiator for intellectual property and innovation at USTR. She was also a professor of international trade and intellectual property at the George Mason School of Law.

Espinel is a founding and ongoing co-sponsor of Girls Who Code’s Washington, DC, summer immersion program, which empowers young women to pursue careers in STEM fields. She speaks before audiences around the world to build visibility for the amazing things people can do with software, and encourages businesses, governments, and the public to support a policy environment that will enable even more software breakthroughs.

Espinel chairs the World Economic Forum’s Global Future Council on the Digital Economy and Society. She was appointed by President Obama to serve on the Advisory Committee on Trade Policy and Negotiations (ACTPN), the principal advisory group for the US government on international trade. She holds an LLM from the London School of Economics, a JD from Georgetown University Law School, and a BS in Foreign Service from Georgetown University’s School of Foreign Service. Follow her on Twitter: @victoriaespinel.

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