Software as Patentable Subject Matter after Alice Storm


After the Alice decision in 2014 (Alice vs CLS Bank), there has been a lot of hue and cry over eligibility of computer implemented inventions. The misconceived notion of computer implemented inventions not being patentable has been reinforced with vague and doctrinally indeterminate decisions from trial courts and the PTAB. Amidst this, the question that begs our attention is what the true interpretation and basis of patent eligibility for a computer is implemented invention. Are they patentable anymore? The answer should be a resounding yes.

How exactly is a software patentable? (Assuming we leave out the legalese of Computer implemented invention and use general term as Software, as is being used all around creating deceptions. For understanding the legal terminology difference between Software and CII, please read).

For any invention to be patentable, the invention must fall within the four technological pillars as defined under 35 USC 101 which reads – “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.

The word process, and machine have been highlighted on purpose since our discussion in this blog rests on the premise that whether a Software can be termed as a machine or a process, if the same should fall under patentable subject matter.

Certainly, Software is a machine. Yes, programming creates a new machine. To be more concrete in phrasing, a Software is a Digital Machine and hence patentable subject matter under 35 USC 101. Similarly, the process steps required for the implementation for the said Digital machine must be patentable as a process under 35 USC 101.

Categorizing Software as machines is not an abstract metaphorical statement, but rather expresses that programs are actual and real machines in the terminology of section 101 of the Patent Act. While some machines are built from physical structures like gears, wires, and screws, programs are built from information structures, such as algorithms and data structures. Thus, writing programs is an industrial design process akin to the design of physical machines. And just like any physical/hardware machine goes under sequence of steps during its manufacture, a Software undergoes different cycles of Software Life-cycle development before it can be used as a useful Digital machine.

Having said that, it is imperative that this digital machine (created through the patentable idea) should fulfil other criteria under 101 to be new and useful. Whenever a computer is programmed, it creates a new digital machine which is physically different from a machine without that program. Hence, this satisfies the criteria for being new. Whether it clears the bar of novelty and obviousness is a different enquiry altogether and shouldn’t be delved upon at this stage which primarily deals with subject matter eligibility.  

Next comes the utility aspect for subject matter eligibility for any invention. This very aspect of an invention being useful in some manner creates the basis for rejection under abstract idea. As such, abstract ideas do not create any tangible general utility and hence are devoid of protection. (To read more on abstract ideas and Lockean Theory of labour Read —-). Software, on the other hand, is always programmed to achieve a distinct functionality.

Therefore, legally interpreting, software justifies every ground under 101 eligibility criteria and there shouldn’t be an iota of doubt over patent subject matter eligibility of software.

Keep following us on our next blog which details the abstract idea conundrum in software patent prosecution.

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