Software Patents: Is Implementing an Abstract Idea through Software Patentable?
The question of whether implementing an abstract idea through a computer program or software constitutes a patentable subject matter came before the Supreme Court of the United States in the case of Alice Corp. v. CLS Bank International in 2014. The court ruled that implementing claims based on abstract ideas through computer programs or software does not transform those ideas into patentable subject matter. Consequently, the patents were deemed invalid as they were drawn to abstract ideas.
Alice Corp. v. CLS Bank International Facts: Alice Corp held patents on computer programs and electronic methods used in a financial trading system to mitigate settlement risk. The system involved online commercial transactions settled by a third party. The patents claimed a method for exchanging financial obligations, a computer system configured to carry out the method, and a computer-readable medium containing program code for performing the method.
Alice Corp alleged that CLS Bank International infringed their patents by utilizing a similar technology for financial transactions. However, CLS Bank International challenged the claims, arguing non-infringement, invalidity, or unenforceability. Alice Corp counterclaimed for infringement.
Referring to the Supreme Court’s decision in Bilski v. Kappos, the district court held that the claims were ineligible for patent protection under 35 U.S.C. 101, which includes an implicit exception for laws of nature, natural phenomena, and abstract ideas. The matter was subsequently brought before the Supreme Court for consideration.
Opinion of the Court In delivering the Opinion of the Court, it was observed that escrow, in itself, is not a patentable invention, and simply using a computer system to manage escrow debts does not qualify as patentable subject matter. The court relied on the decision in Mayo v. Prometheus, which held that an abstract idea cannot be patented solely because it is implemented on a computer.
The court established a two-step analysis, as outlined in Mayo v. Prometheus, to determine the patentability of an abstract idea:
- Determine if the patent claim contains an abstract idea, such as an algorithm, method of computation, or general principle.
- Determine if the patent adds something extra to the idea that embodies an inventive concept.
The court further noted that mere instructions to implement an abstract idea on a computer do not confer patent eligibility. Merely reciting a generic computer is not enough to transform a patent-ineligible abstract idea into a patent-eligible invention. Merely stating an abstract idea and adding the words “apply it” is insufficient for patent eligibility, as is limiting the use of an abstract idea to a particular technological environment.
In the dissenting opinion, it was acknowledged that business methods were categorically outside the scope of the patent system. However, the majority’s view that the claimed subject matter was an abstract idea was accepted.
Although this case did not explicitly address software, it is considered a decision on software patents or patents for software used in business methods. The ruling did not provide clear guidelines on the patentability of computer programs (software patents).
