Attorney, The Creekmore Law Firm PC


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A U.S. Patent Certificate. Public domain image courtesy of Wikimedia Commons.

In principle, the answer is “yes,” but doing so has become a lot more difficult under recent court decisions.  Generally speaking, to obtain a utility patent you must have something that (1) contains patentable subject-matter; (2) is novel; (3) is non-obvious; (4) is specifically defined and fully disclosed; and (5) has utility.  We provide further details on our patents and trade secrets page.

Both processes and machines qualify as patentable subject matter under Title 35 of the United States Code.  Software patents are often criticized as patenting non-technical processes or otherwise providing monopoly power for abstract ideas or mathematical formulas, all of which are not patentable under current court precedent.  On this basis, many argue that software is not patentable subject matter–that is, no matter how novel and non-obvious particular software is, software should never be eligible for patent protection, so the argument goes.  Nevertheless, software is clearly patentable as a component part of a machine, but not as a stand-alone item.  The United States Supreme Court suggested as much in its 2010 decision in Bilski v. Kappos, when it held that a business method–including one implemented in software–is not per se unpatentable.  In practice, business methods are usually implemented in software.

The idea that software embodied in a machine ought to be patentable makes sense.  Notwithstanding the position of software patent detractors, it is a simple and intuitive legal rule that a machine should not lose patent eligibility simply because it is programmable.  If that were the case, most electronics would have issues obtaining patent eligibility, as many include a programmable chip to control their functions, and they usually can be updated with new software to change the operation of the chip.

And that bring us to Alice Corp. v. CLS International.  The U.S. Supreme Court granted a writ of certioriari to decide “[w]hether 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 U.S.C. § 101.”  Alice owned a patent covering software implemented in a computer that could hedge the risk of settlement of a financial transaction between two parties.  In the abstract, Alice claimed nothing more than the broad idea of using a third-party intermediary to facilitate the settlement process, embodying this idea in computer-implemented software.  Justice Thomas, writing for the entire Court, logically reasoned that such an abstract idea was not patentable, and so its generic implementation in a machine was also not patentable.

While the ruling has a certain logic too it, there is now a serious question to what degree any software is patentable.  Indeed, in a talk I participated in at NuSpark, a Blacksburg co-working space, a patent examiner with the United States Patent and Trademark Office indicated that the examiner corps is awaiting administrative guidance on how to handle patent applications concerning software.  According to the Software Freedom Law Center, one of the amicus curiae that advocated for the invalidation of Alice’s patent, “the Supreme Court took one more step towards the abolition of patents on software inventions.”

Yet, the Court noted in its opinion that “there is no dispute…that many computer-implemented claims are formally addressed to patent-eligible subject matter.”  In other words, according the Supreme Court, you can patent software implemented in a computer, but you may not patent software implemented in a computer that merely embodies an abstract idea. Where the law draws the line is anyone’s guess at the moment.  Most any computer program can be deconstructed into a series of discrete steps–an abstract idea, as it were.  The argument over where we draw this line will likely occupy patent law for decades to come.

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