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IP In the News

Can Software Be Patented? The Patent Landscape post Alice v. CLS

Posted on January 25, 2016 at 9:20 AM Comments comments (1)

The recent US Supreme Court decision of Alice v. CLS Bank has specificed a Section 101 framework in which software patents must now be examined.  The court has enumerated two questions that must be asked in a software patent:

1. Does the claim merely cover an “abstract idea”?

2. Is there an (additional) “inventive concept” that turns this idea into a patentable application of the abstraction?

This decision does not elliminate the possibility of software patents but certainly leaves their patentability uncertain and open to challenge.

The recent case of Motio Inc. vs. Avnet Inc. has provided one example of how to circumvent this issue.  In that case the court found the that the "inventive concept" was an "automated agent" eligible for patent protection.


Alice, Bilski and the Growing Resistance in Securing Computer Related Patents

Posted on July 5, 2014 at 10:05 AM Comments comments (0)

In June, the Supreme Court heard the case Alice Corp. v. CLS Bank International.  In this case CLS challenged a number of Alice's patents claiming that the patents protected ineligible subject matter. The patents in question performed escrow calculations using a computer.  CLS contended that the use of the computer was not sufficient to support the patent claims.

In deciding this case the Supreme Court used a two-part test asking:

1)  Does the patent involve an abstract idea that would be ineligible for patent protection under 35 USC 101? (i.e. algorithms, mathematical concepts, chemical elements, naturally occurring biological products, or methods that could be carried out in a person’s head)

2) If the patent does involve an abstract idea, is there some element in the claims or some combination of elements that amounts to significantly more than the abstract idea itself?

The Court held that Alice's patents were simply a widely used economic formula used in conjunction with a computer and this was not enough to support patentability.  This case in conjuction with Bilski raises the bar for patent eligibility in computer related patents.

Moving forward, patent applicants will find it increasingly difficult to patent computer programs unless they offer some significant improvement over standard algorithms and formulae.

Software Based Patents Should Do More Than Accelerate Calculations

Posted on May 31, 2013 at 8:25 AM Comments comments (0)

A recent ruling by the Federal Circuit held that claims must do more than simply accelerate human calculations in order to be eligible for patentability.  Inventors would be wise to distinguish the role of the computer in their patent application.

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