Table of Contents:

- History

- Benson

- Flook

- Chakrabary and Diehr

- Drawing the Line

- Business Methods

- Other Ways of Claiming

- Printed Matter

- Applying for a Software Patent

Full treatise table of contents

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Chapter 5: Software-Based Inventions

[On June 19, 2014, the Supreme Court
decided Alice v. CLS Bank,
which substantially changed, and continues to
change, the discussion below.]

Probably no aspect of patent law has been more uncertain than the issue of what, if any, software-based inventions can be patented. But recent developments have gone a long way toward clarifying when a software-based invention will be statutory subject matter. The Patent Office has issued guidelines {FN1: 61 Fed. Reg. 7478 (1996)} for examiners that clarify when a software-based invention is statutory subject matter. The recent Bilski and Alice decisions by the Supreme Court has reopened the question of when a software-based invention is patentable, with uncertainly that may last for a decade or more.

The past lack of clarity came not from the statute itself, but from the court decisions that have attempted to interpret Section 101of the patent laws, {FN2: 35 U.S.C. §101} which states what may be patented. The cases are difficult to reconcile and are often based on distinctions that don’t stand up to technical (rather than legal) analysis. In many instances, an invention has been considered nonstatutory not because of the nature of the invention but because of the way it was claimed. In the prosecution of some patent applications for software-based inventions, most of the examiner’s time has been spent on the question of whether the invention contained statutory subject matter, while for other patent applications, the question hasn’t even been raised.

It is important to remember that whether a claimed invention recites statutory subject matter is just the first hurdle that must be conquered before one receives a patent. The invention must also be novel {FN3: 35 U.S.C. §102} and nonobvious, {FN4: 35 U.S.C. §103} and the application must fully disclose how to make and use the invention. {FN5: 35 U.S.C. §112, first paragraph} As an example, if an application today were to claim an ordinary pencil, it would clearly be claiming statutory subject matter, but no patent could issue because the claimed invention is not novel. On the other hand, if an application were to claim this text, it would be rejected because a writing is not statutory subject matter, regardless of its novelty or nonobviousness.

I. Reluctance at the Beginning

The history of the patentability of software-based inventions has been marked by a reluctance of the Patent Office to enter this new field of technology, an appeals court recognizing the broad range of what should be patentable, and a confusing decision by the Supreme Court when it first considered patents of software-based inventions.

In 1966, the President’s Commission on the Patent System issued a report that discussed, among other things, whether software should be protected by patents.

Uncertainty now exists as to whether the statute permits a valid patent to be granted on programs. Direct attempts to patent programs have been rejected on the ground of nonstatutory subject matter. Indirect attempts to obtain patents and avoid the rejection, by drafting claims as a process, or a machine or components thereof programmed in a given manner, rather than as a program itself, have confused the issue further and should not be permitted.

The Patent Office now cannot examine applications for programs because of a lack of a classification technique and the requisite search files. Even if these were available, reliable searches would not be feasible or economic because of the tremendous volume of prior art being generated. Without this search, the patenting of programs would be tantamount to mere registration and the presumption of validity would be all but nonexistent.

It is noted that the creation of programs has undergone substantial and satisfactory growth in the absence of patent protection and that copyright protection for programs is presently available. {FN6: To Promote the Progress of Useful Arts, Report of the President’s Commission on the Patent System, at 13 (1966)}

The view that steady growth in the software industry since 1966 somehow obviates the need for patent protection is myopic. In the early days of digital computers (before 1970), there was little need for statutory protection of computer software, either by patent or by copyright. There were few computers, most of which were at large companies, and most software was written by programmers at the company using the computer. Software marketed to others could be protected by contract and trade secret, since it was usually expensive and sold to a small market.

The argument that something should not be protected by patents because of the inability of the Patent Office to amass the proper search library should be viewed as a condemnation of the Patent Office for not doing its job, not a reason to refuse applications for software-based inventions. In any inventive area where the Patent Office discourages applications, the necessary search library will never develop. This is a detriment not only to the Patent Office but to the country as a whole, since important techniques will remain trade secrets rather than being disclosed in patents.

Next section: Benson

[On June 19, 2014, the Supreme Court decided Alice v. CLS Bank, which substantially changed, and continues to change, the discussion below.]

I. Reluctance at the Beginning

[On June 19, 2014, the Supreme Court
decided Alice v. CLS Bank,
which substantially changed, and continues to
change, the discussion below.]