The ease of procuring patents for software and computer programs has ebbed and flowed over the decades since the Supreme Court’s first ruling related to software patentability, Gottschalk v. Benson (1972). After a considerable period in which patents were readily approved by the USPTO, a spike in litigation occurred. Partly in response to this spike, U.S. courts began issuing rulings that effectively tamped down the prevalence of software-based patents being approved.
Alice Corp. v. CLS Bank International
In 2014, the Supreme Court issued a unanimous ruling that invalidated a patent held by Alice Corporation. Alice held four patents on computer programs that essentially operated an escrow account, which is an intermediary between two parties doing business with each other. Another company, CLS Bank International, began using similar methods a few years after the first of Alice’s patents was approved.
In its ruling, the Supreme Court found that Alice’s patents were essentially computer programs that implemented abstract ideas; abstract ideas are not patentable under U.S. patent laws. Although the case did not explicitly involve software, the ruling in this case had ramifications for software patents and the requirements for getting one approved. Dozens of companies and entities, such as Google, Amazon, and Microsoft, submitted amicus curiae briefs requesting the court to issue a decision on software patentability.
Mayo Test
A previous ruling by the Supreme Court, Mayo Collaborative Services v. Prometheus Laboratories, Inc. (2012), provided a framework for deciding the Alice case. Though the Mayo case’s subject matter was ever further removed from software than the Alice case (it involved a blood test that helped determine medicinal dosage for certain patients), the court arrived on the other side with a two-pronged test to determine if something is patentable.
- The first part of the Mayo test is to discern whether or not the subject matter in question contains an abstract idea, such as an escrow account. If the answer is “no,” the claim could be patentable and is therefore subject to U.S. patent law.
- If the answer to the first part is “yes,” then the court must determine whether or not the claim adds something to the abstract concept that results in an “inventive concept.” If the answer to this second part of the Mayo test is “no,” then the patent must not be valid.
Conclusion
Just as technology itself is constantly being updated and refined, so are court precedents that affect the patentability of software. Van Court & Aldridge recognize the difficulty of getting software patents approved these days. We provide patent solutions to a myriad of companies and industries, and we would love to help you. Call us at (347) 470-6620 for an initial assessment of your claim by an experienced intellectual property legal team.
Van Court & Aldridge LLP
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