United States: Indecision By Federal Circuit Provides Clear Guidance (Software Is Patentable Except When It's Not)

In an eagerly awaited decision, on May 10, 2013, the Court of Appeals for the Federal Circuit ("Federal Circuit") in CLS Bank International v. Alice Corporation ("CLS") issued a ruling on the patentability of computer software. The Court ruled that. . .well, we on't know. That uncertainty provides us with the best guidance on what the patent law should be.

Patent protection is available for inventions and discoveries that satisfy certain requirements: 1) eligible subject matter 2) sufficient ovelty and 3) explanation of the invention with enough detail such that the progress of science is promoted.

In CLS, the Court was focused on the eligible subject matter requirement. The general idea behind this test is that one cannot patent a law of nature (e.g. gravity) because such phenomena should be available to all. More specifically, the Court pontificated on whether the pertinent patent claimed something that was too "abstract" to be eligible subject matter. The problem is, no one, including the Court, knows what "abstract" means or should mean. Ten judges issued what appear to be six distinct opinions. The only "majority" was the Per Curiam ruling that the pertinent patent was nvalid. No agreement was reached as to why the patent was invalid.

In other areas of law, where an appellate court is so divided, Supreme Court guidance is welcome. The problem here is that Patent Law is esoteric. The Supreme Court does not see patent cases often and perhaps does not appreciate the nuances involved in this area of law. As a consequence, the Federal Circuit (being a specialty appellate court that hears patent appeals) is typically the final arbiter on Patent Law. If the final arbiter on patent law, the judicial body that sees more patent cases than any other, cannot decide on how to define "abstract", the eligible subject matter prong no longer has practical application and serves to inhibit the progress of science. Our focus, and that of the courts and the Patent Office, should be on whether the pertinent invention is novel. A concurrence(?)¹ by Chief Judge Rader reflected this sentiment stating that eligible subject matter should not be a condition for tentability and that novelty should govern the patentability of aims.

Footnotes

^{1 Literally "Additional Reflections."}

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