Why there is no uncertainty in the wake of Alice
The 2014 Alice v CLS Bank decision by the US Supreme Court has caused uncertainty, according to some commentators. Specifically, they say, the decision created uncertainty surrounding the patentability of computer–implemented inventions. For example, a WIPR reader survey in November indicated that 88% of respondents think legislation should be created to end the ambiguity.
Nothing could be further from the truth, however. There is not only certainty surrounding the patentability of inventions that show a computer as the preferred way to implement the invention, there is absolutely no need for new US patent legislation. There are two reasons for this.
Reason one: the decision
On December 6, 2013, the Supreme Court granted certiorari on the following question that was framed by Alice: “Whether claims to computer-implemented inventions—including claims to systems and machines, processes, and items of manufacture—are directed to patent-eligible subject matter within the meaning of 35 USC §101 as interpreted by this court?”
In the oral arguments on March 3, 2014, and in the court’s 9–0 decision on June 19, 2014, that question was never directly answered. But indirectly the court answered ‘yes’ when it wrote that “inventive concepts” are the basis for a patent. The court went on to state that “improvements to another technology or technical field” and “improvements to the functioning of the computer itself” were examples of patentable subject matter.
Those statements are completely consistent with the Supreme Court’s 1981 Diamond v Diehr decision. On page 13 in the Alice ruling the court wrote “… the claims of Diehr were patent-eligible because they improved an existing technological process, not because they were implemented on a computer”.
The US Patent and Trademark Office (USPTO) expanded on “inventive concepts” when it issued its preliminary examination of the Alice decision on June 25, 2014. The USPTO stated: “Notably, Alice Corp neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods.”
Reason two: software is only a means to an end
Clearly, one does not get a patent on software or a computer program. But software could be the best way to implement an invention. Software, just like electronic circuits, steam power, wind energy, or solar energy—to name a few—only describes a way to implement (disclose) an invention.
Under the USPTO guidelines, one receives a patent only if a) there is an invention; b) there is a proper specification (an adequate disclosure to one skilled-in-the-art); and c) the so-called invention in the patent application is not abstract and not obvious. True inventions must stand on their own two feet and meet the test of an invention as specified in US patent law. The USPTO states that an invention is defined in its claims and not by its specification (see “ Determine what is the invention” heading).
“True inventions must stand on their own two feet and meet the test of an invention as specified in US patent law.”
It’s now more than a year since the Alice decision and there have been many lower court decisions based on that ruling. When these lower court decisions are reported in the media, many headlines contain the phrase “software patents”. Yet, the Supreme Court never once mentioned the term “software” or “software patents” in its Alice opinion. And in the 2010 Bilski v Kappos Supreme Court decision, as well as the Diehr decision, software patents were also never mentioned.
It is also true that since the Alice decision the lower courts have set a new record for rejecting those so-called software patents and some media outlets have written that courts have grown increasingly hostile to “software patents”. But that’s a good omen because of the many obvious patent applications that should have never been approved by the USPTO.
The WIPR readers are not alone. There is stillmuch confusion about the Alice decision in the lower US courts. Only recently, on November 16, there was an article entitled Software Patent Eligibility: Where is the Industry Heading? on the IPWatchdog blog which discussed many of the confusing lower court decisions. As the USPTO and its patent examiners gain more experience in rejecting obvious and abstract patent applications, the rate of rejection by lower courts will go down.
To summarise, if there is a true invention and a clear specification on how to implement the invention, based on the Alice decision the USPTO guidelines are to award a patent to that invention no matter how the invention was implemented. So from a Supreme Court vantage point, there is no uncertainty and no new legislation is needed.
Martin Goetz can be contacted at: marty@goetzassociates.com
