When are computer related inventions considered patent eligible rather than merely abstract ideas? Put simply, there is no bright line test at the moment, which was essentially (though unofficially) confirmed in CLS Bank International v. Alice Corp on May 10, 2013. Rather than providing a specific new test for determining whether a computer-implemented invention is patent eligible and not merely an “abstract” idea under Section 101 of the U.S. patent laws, the Federal Circuit in this case simply issued a per curiam opinion affirming the District Court’s ruling. The District court held that the asserted claims of Alice Corp.’s U.S. patents were invalid because they did not recite patent-eligible subject matter, but were instead merely directed to the abstract idea of “employing an intermediary to facilitate simultaneous exchange of obligations in order to minimize risk,” despite involving computers.
It bears noting that there already exists substantial treatment of this general analysis in notable Supreme Court decisions, such as: Gottschalk v Benson (1972); Parker v Flook (1978); Diamond v Diehr (1981); Bilski v Kappos (2010); and Mayo v Prometheus (2012), which are well-cited in the various concurring and dissenting opinions of CLS Bank International v. Alice Corp. Thus, some might argue that the existing framework laid out by these Supreme Court cases is generally sufficient for such an analysis; whereas others might desire even more guidance with regard to computer-related inventions in particular.
Given the lack of any new test, it would also appear that the same general analysis still applies whether the computer related claim is embodied in a system, in a method, or in a computer readable medium – in that none of these three types of claims would inherently make the claim patent eligible under Section 101 nor would they inherently prevent the claim from being patent eligible under Section 101.
Perhaps a key takeaway for inventors is that their patent applications should include claims that recite substantially more than just an abstract idea of doing something. Indeed, regardless of whether one agrees with the holding in this specific case, it seems that getting beyond an abstract idea requires that patent claims be recited with a sufficient level of detail, which in turn might be case specific for a given technology or application. In other words, the more detail on how a process or computer is implemented and what exactly it does in the context of the invention, the better the prospects of patentability should be.
Thus, even though Alice Corp.’s asserted patent claims did not withstand litigation in this case, other examples of patents which have withstood the test of litigation and/or re-examination may hint at the level of detail necessary to achieve patent subject matter eligibility under Section 101. For instance, the “Uniloc” patent asserted against Microsoft, that resulted in one of the largest damages awards in U.S. history ($388 Million), might provide one such example (U.S. Patent Number 5,490,216 for a “SYSTEM FOR SOFTWARE REGISTRATION”). As another example, Amazon.com’s “one click” patent for a “METHOD AND SYSTEM FOR PLACING A PURCHASE ORDER VIA A COMMUNICATIONS NETWORK” appears to have withstood various challenges as well (U.S. Patent Number 5,960,411).
The full opinion(s) can be found here (CLS Bank International v. Alice Corp., No. 11-1301).