Share This Article


The Patentability of Computer Software to be Revisited

By Joseph S. Heino

On October 9, 2012, the Court of Appeals for the Federal Circuit issued an Order that will allow it to revisit the patentability of computer software.

Specifically, the court ordered that the following issues be addressed:

    1. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea” and when, if ever, does the presence of a computer in the claim lend patent eligibility to an otherwise patent-ineligible idea?
    2. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?

Underlying this Order is an initial district court ruling that the patent claim at issue lacked subject matter eligibility. On July 9, 2012, the Court of Appeals for the Federal Circuit reversed. In a split 2-1 decision, it held that, when considered as a whole, the claim is patent eligible. CLS Bank Int’l v. Alice Corp. (Fed. Cir. 2012). The October 9, 2012 Order vacates that decision.

The subject of computer software patentability has been visited and revisited over the years. This has resulted in somewhat blurred lines between what is and what is not patentable, particularly when examined from the viewpoint of the United States Patent and Trademark Office (“USPTO”). The decision from this Federal Circuit rehearing should provide further clarity to inventors, patent holders and the USPTO. In the meantime, computer software subject matter remains patentable. It also continues to be closely scrutinized by the USPTO.

Please contact your Davis & Kuelthau attorney, or Joseph S. Heino at 414-225-1452, or Patrick M. Bergin at 414-225-7563, with any questions regarding patent application, patent enforcement and other issues related to computer software.