Thursday, June 19, 2014

Supreme Court ruling in CLS Bank v. Alice makes 'generic' the new magic word for software patents

The Supreme Court of the United States just handed down its opinion in Alice v. CLS Bank, a case that some people (including the appellant) misportrayed as a case that was fundamentally about whether or not computer-implemented inventions are patent-eligible. In February I explained why this case was more of a "Bilski Reloaded", and I later commented on the March 31 Supreme Court hearing, predicting that software would undoubtedly remain patent-eligible. And indeed, today's decision is narrowly focused on issues that relate to abstract ideas such as business methods and does not provide any guidance with respect to the patent-eligibility of technical inventions involving software.

I have filed a U.S. patent application (and a simultaneous PCT application) on a computer-implemented invention and will file a couple more soon, but those fighting this category of patents also appear to agree that software patents haven't been abolished, judging by the initial reactions I've seen on Twitter and certain websites.

I'll keep this brief because everything turned out just as expected and because this ruling hasn't really changed anything. There's only one observation -- the one I already stated in the headline -- I wish to share. It's clear that post-Alice those challenging software patents and those defending them will have a favorite word and it is "generic". It's all over the SCOTUS opinion, in most instances as a qualifier before the word "computer" and sometimes before "computer implementation". And in at least one instance, "generic" itself has a qualifier:

"Wholly generic computer implementation is not generally the sort of 'additional featur[e]' that provides any 'practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself."

The word "generic" also appeared in the Federal Circuit opinion(s), but in different combinations. The Supreme Court linked it to "computer implementation" because the question on appeal was whether the Federal Circuit ruling rendered all computer-implemented inventions patent-ineligible.

In Europe, where software is excluded from the scope of patent-eligible subject matter by statutory law (Art. 52 of the European Patent Convention), the equivalent to "generic" is "as such": software as such is not patentable, but technical inventions involving software are (making "technical" the magic word in Europe). In Europe there's already a rich body of case law concerning what is or is not technical. In the U.S., courts are now going to have to figure out again and again the meaning of the term "generic". Those applying for or defending software patents will argue that their inventions are not "generic" computer implementations of abstract ideas. Those challenging such patents will try to define "generic computer implementation" as broadly as possible and argue that every software patent they attack involves previously known computing technology and an abstract idea.

The Supreme Court clearly says that it does not want the exclusion of abstract ideas from patent-eligible subject matter to "swallow all of patent law". No doubt about that intent, but this won't dissuade some from trying to interpret the Supreme Court ruling overbroadly. It's a bit unfortunate for those seeking or defending software patents that there hasn't been a recent Supreme Court ruling that would have upheld a (technical) software patent and created some kind of safe harbor for software patents. In Alice, the only safe harbor for software patents that the Supreme Court mentions is that "a computer-implemented process for curing rubber was patent eligible [...] [because it] "employed a 'well-known' mathematical equation [...] in a process designed tosolve a technological problem in 'conventional industry practice.'" That reference to Diamond v. Diehr, a 1981 decision, is not a safe harbor for software patents that are unrelated to manufacturing processes. There's a huge gap between Diamond v. Diehr and Alice v. CLS Bank, and as a result there is a need for a whole lot more line drawing, which I guess we will indeed see in the years ahead. For the sake of balance it would be helpful clarification if the Supreme Court could at some point affirm a technical software patent, such as an operating system patent. For now we just know what the Supreme Court considers a "generic computer implementation", but there's a need for more clarity as to what is not just generic.

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