Google Review

Software Patents: Yes or No?

If you are a software developer, you may be frustrated that you cannot seem to get a straight answer on whether your software-related invention is patent eligible in the United States, much less abroad.  Well, you aren’t going to get that straight answer from me, either!  But at least I will try to give you the basics of software patentability, and to keep it short (You’re welcome …).

Practical Application

All major industrialized nations generally agree that laws of nature, natural phenomena, and abstract ideas cannot and should not be patented. Applied science, however, can be patented.  The more a disclosed invention moves in the direction of applied technology, the greater the likelihood of patentability.  Consequently, computer hardware is clearly patentable.  Software and computer-implemented inventions, on the other hand, lie somewhere in the gray area between abstract ideas and applied technology.

Schools of Thought

The United States and European positions on the patentability of software dominate the world’s legal discourse on the subject.  The United States approach is less stringent than the European approach, in that software-related inventions considered patentable in the United States might fall outside of the scope of patentable subject matter in Europe.  Because national patent laws in economically influential countries such as Brazil, Russia, India, and China all roughly model the European approach to patentability of computer programs, an American software developer must understand the differences between the substantive examinations a software-related patent application will undergo in the United States as compared to Europe and in other countries that apply the European approach.

Software Patents: United States Model

According to the United States Supreme Court, Congress intended patentable subject matter to include “anything under the sun made by man.”  Application of this broad interpretation of patentability in the Information Age led federal courts to develop various eligibility tests impacting computer programs.  Beginning in the 1970s, the machine-or-transformation test gained prominence, dictating that a process may be patent eligible if (1) it is implemented with a particular machine specifically devised and adapted to carry out the process in a way that is not concededly conventional and is not trivial; or (2) it transforms an article from one thing or state to another.  For example, in 1994 the Court of Appeals for the Federal Circuit (CAFC) found a program to create a smooth display of numeric data on an oscilloscope was patentable subject matter because the claimed invention as a whole was a practical application of an abstract idea providing a useful, concrete and tangible result.  Although the Supreme Court has since rejected the “useful, concrete, and tangible result” test for patentability, guidelines published by the United States Patent and Trademark Office (USPTO) suggest that “particular practical application” of an abstract idea remains a factor weighing in favor of eligibility, with the “machine-or-transformation” test providing a useful clue as to that practicability.  These eligibility factors operate regardless of whether a machine or process can be identified within the claimed subject matter.  On the flipside of that coin, “… system or product claims [cannot] be saved only by the fact they may nominally recite a ‘computer’ or ‘manufacture.”

What To Expect
The United States patent eligibility rules suggest that the best thing an inventor can do is focus claims and disclosure on the particular practical application of your software-related and/or business method invention.  However, old habits die hard.  Do not be surprised if a patent professional and even a patent examiner push back on your invention as being a) a patent ineligible abstract idea because it fails the machine-or-transformation test or b) a patent ineligible business method because it could be carried out without a computer (e.g., with “pen and paper“).  Instead, if you are confident your invention can deliver its particular practical application with or without being implemented using a computer, then stick to your guns on patent eligibility.
… uh, that is to say, in the United States.  Next week, we will discuss Europe.