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« News from Abroad: Double Patenting at the EPO -- What Does "Same Subject Matter" Mean? | Main | Thoughts on Alice Corp. v. CLS Bank Int'l »

June 19, 2014



How do you account for the fact that the claims in this case are structured in the same way as claims in virtually all software patent cases? If these method claims are patent ineligible, and that makes system claims patent ineligible, what method and systems claims could be allowable under this decision?

I realize the Court didn't say software is not patentable. They didn't even use the word "software" in the decision. But it seems to me that saying these claims are patent ineligible has to mean that similarly constructed method and systems claims will likewise be patent ineligible. I feel certain that is how the USPTO will interpret the case.


When this case first came out in the Federal Circuit in 2012 I published a guest posting under the heading CLS Bank v Alice Corporation reveals "A House Divided". I commented:

"Whether the claimed subject matter lies in the reality of patent-eligible subject-matter or is more correctly located in the Wonderland of abstract ideas is an issue that has been debated on both sides of the Pond, and on which the Dodo or the King of Hearts in his judicial capacity would surely have had an opinion if it had been brought to their attention. In the US there appears to be ample scope for further debate."

It is interesting to see how closely the predictions in that posting and the ensuing comments turned into reality, and also the convergence between the European and US view as to what is eligible in the software/business method field.

Ain't harmonization wonderful? Clearly not.

I realize that the Court has made it difficult if not impossible to uphold the validity of many software patent claims as granted - one of the problems with the Court is its failure to recognize that in its blind efforts to preclude patent eligibility for claims falling within its own created "exceptions" it has no regard for disturbing the settled expectations of the public regarding eligible patent claims. But I think the substantive aspects (as far as they can be discerned) may help.

First, claims reciting methods previously practiced without computers are in the most trouble. But there are many computer-based claims where there was either no method in the prior art because the method requires a computer for implementation or, while the method existed the use of a computer provides qualitatively different (better) outcomes. These are both "technological advances" in the art that should render such claims eligible (and that's as far as my understanding of the computer arts goes, so I can't be more specific).

Second, as with genomic DNA in Myriad the Court had enunciated a clear rule: just performing a method on a general purpose computer will not be enough. This situation reminds me of the spate of cases that arose after KSR relating to making something that had been controlled mechanically into an electromechanical device to achieve the same ends. (I realize the advantages of using 102/103 instead of 101 but the Court has abrogated any distinction between the statutory sections.)

Finally, by affirming the Federal Circuit, particularly in view of how fractured the lower court is, the Supreme Court has likely disincentived any rush to the court when the expected deluge of patent ineligibility cases arises.

What needs to be done is simple: companies that have based their existence on patents have to start supporting academics who will research the position that patenting should should be broadly done on "anything under the sun" that shows evidence that the hand of man was needed to make the invention, and then press their legislators to prevent a massive job loss to overseas competitors by changing patent law to cover at least some of the catagories made ineligible by the Court or the PTO.

Thanks for the comments

Dr Noonan,

Should I change my moniker to "Jaded," given your advice, as it appears to be a capitulation on the attack of the patent system from the Left (Academia)?

The Court is made up of a particular type of person, and that type of person has been influenced throughout their entire lives to believe that academics are disinterested and impartial (as opposed to the parties or amici) as well as people who take a broader approach to policy questions, where the ivory tower is at least in the neighborhood of the Court'r judicial Mt. Olympus. My suggestion, in view of the tendency of the Court to be influenced by academic writing, is to support those in the academy who would point out the inconsistencies with regard to economic reality that the Court's recent decisions have introduced into the patent system.

Thanks for the comment.

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