Promoting the advancement of science through a system of guaranteeing certain exclusive rights to inventors of new and useful articles reaches back to the very foundation of the United States Constitution.  Article II, Section 8 specifically provides that Congress shall have the power “[t]o promote the Progress of Science and the useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”  Ever since that enigmatic phrase was scribed, patent law in the United States has struggled with identifying just what types of subject matter are eligible for patent protection.

Patent law defines four categories of patentable subject matter, into at least one of which any invention must fall to be eligible for patent protection: process, machine, manufacture, or composition of matter.  In contrast, laws of nature, physical phenomena, and abstract ideas cannot receive patent protection.  As discovery and innovation grow, courts continue to struggle with categorizing new inventions as either patentable or not patentable subject matter.

The most recent struggle, looming for the U.S. Supreme Court in June of 2014, is whether new software, arguably the most prevalent current form of innovation, will definitively be deemed too abstract to patent.  Decisions to date have been adjudicated mostly with respect to the principles determining the patentability of mathematical algorithms set out in the Supreme Court Trilogy decisions (Gottschalk v. BensonParker v. Flook, and Diamond v. Diehr) and the patentability of business methods in the seminal 2010 Bilski v. Kappos decision.  In so doing, the Supreme Court has mostly decided the eligibility of software for patent protection on a case-by-case basis, maintaining unclear standards and divisive majority opinions on whether software patents categorically can be considered patentable or not.

In May of 2013, in Alice Corp. Pty Ltd v. CLS Bank Int’l, an extremely divided ten-judge panel of United States Court of Appeals for the Federal Circuit ruled that Alice Corp.’s patented software, which provides a way to reduce the settlement risk in financial transactions between two parties, was actually ineligible for patent protection, but produced seven different opinions on the patentability of computer software inventions.  In the end, the court failed to settle on a cognizable standard that would once and for all determine the eligibility of computer software for patent protection.  This decision has been granted certiorari by the Supreme Court, with oral arguments currently set for March 31, 2014.  In the meantime, the upcoming decision has drawn the attention of many scholars and players in the software industry, evidenced by over forty amicus curiae briefs filed by third parties.  It seems that many hope the Supreme Court will finally either deem software definitively patentable subject matter, or force software engineers to look to other legal means through which to protect their innovations.        

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