As 2014 came to a close, and the patent community weighed in on the year’s most momentous patent events, there was one clear winner: the Supreme Court’s summertime decision regarding software patentability in Alice Corp. v. CLS Bank Int’l (“Alice”). Immediately following the decision, we predicted the death of many software patents (see our TechCrunch article here). And now, following a glut of court decisions appearing to confirm the prediction, we are often asked the same question by those with a stake in software patents: “What does it all mean and what do I do now?” To this, we offer our thoughts:
In Alice, the Supreme Court gave us a checklist of sorts by which to analyze whether a software invention is patent eligible under 35 U.S.C § 101 (or still valid if the patent has already been granted). First, you must determine whether the underlying, claimed software invention is an abstract idea. If it’s not, you’re generally home free. If it is, however, then your software invention can’t be patented unless you can show that you did something more than use the Internet or a computer to make your invention come to life. Such a showing could be that the software invention achieves some new result not previously attainable, requires novel computer operations to operate or improves the functioning of the hardware itself.
But the Supreme Court’s test begs one big question: what is an abstract idea and when is a software invention considered one? As luck would have it, the Supreme Court didn’t provide much help on that issue. However, in struggling to understand what the Supreme Court meant, courts have given us some guidance. And if you had the chance to slog through those cases, here’s what you’d find.