Alice Corp. v. CLS Int’l

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.

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