“In another moment down went Alice after it, never once considering how in the world she was to get out again.” — Lewis Carroll, Alice’s Adventures In Wonderland
This spring in Alice v. CLS Bank, the Supreme Court will once again confront the issue of patent eligibility, this time asking whether computer-implemented inventions are the types of innovations our patent system should protect. It may seem curious–or ‘curiouser and curiouser’–to many that the Court feels the need to address this issue after over a half century of breakthrough software inventions backed by software patents. But the Court seems particularly focused on the question of eligibility. In fact, Alice is the fourth time in as many years the Court has heard appeals asking whether inventions ranging from isolated DNA to business methods can be protected by patents.
We believe the Court is revisiting the issue of patent eligibility because it is struggling to formulate a workable test. The patent statute has no limitations on patent eligibility, as long as an invention is directed to a machine, product, process, or chemical composition it is eligible for patenting. Over the years, the Supreme Court has created exceptions for laws of nature, natural phenomena, and abstract ideas. It is the last exception that is relevant to computer-implemented inventions — i.e. is this invention ineligible because it is an “abstract idea”?
In IBM’s amicus brief in Alice, we argue that the abstract idea test doesn’t work for computer implemented inventions. The Court has not provided guidance on how to identify a patent ineligible abstract idea, and thus lower courts, the PTO and the public can not consistently apply the test. In the present case, this confusion resulted in multiple opinions (with no majority) spanning over one hundred pages at the Federal Circuit, despite that court’s decision to hear the case en banc. A closer look at the types of concerns raised by certain computer implemented inventions reveals that the non-obviousness requirement would be a more appropriate vehicle to address these concerns, because the inventions are in fact old methods implemented on computers using conventional means — embodying nothing truly new. More importantly, when properly understood, computer-implemented inventions are never really abstract because they are implemented on a machine.
Computer implemented inventions, particularly in software, form the basis for innovation not only in the technology products we use every day, such as laptops and smartphones, but in everything from cars to surgical techniques to innovations that increase efficiency and production in factories. Strong and effective patent protection for these innovations in the U.S. has fostered a fertile environment for research and development and, as a result, the US is the undisputed leader in the software industry. We stand at the threshold of a new era of cognitive computing—ushered in by advances such as IBM’s Watson — in which machines will learn, reason and interact with people in more natural ways. Patents have helped fuel the software breakthroughs we rely on today, and will help spur the innovations of tomorrow. We hope the Court — and the patent community — will consider our future as we address the fundamental issue of what our patent system is and should be designed to protect.
Additional perspective about IBM’s stance on software patents and CLS Bank amicus brief can be found at: