Patent Eligibility for Computer-Based Inventions

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Over the last few years the debate of patent eligible subject matter under 35 U.S.C. § 101 has been a hot topic. Recently, on February 8, 2013, the Federal Circuit held oral argument in CLS Bank v. Alice Corp. regarding subject matter eligibility for a compter-based invention.

The two questions presented at the hearing were: (1) what test should the court apply when determining whether a computer-implemented invention is patent eligible, and (2) should it matter whether a computer-based invention is claimed as a method, system or storage medium, or should these different claim strategies be considered equivalent for § 101 purposes?

During oral argument, the parties seemed to agree that software is not per se patent eligible, meaning that software by iteslf and independent of its computer implementatoin is likely an "abstract idea." There also seemed to be a consensus that a specially designed computer used to implement or perform a particular function can be patent eligible under § 101. The center of the debate was what test the courts should apply in order to determine whether a specialized computer is involved, and whether the claims at issue meet those standards.

The Federal Circuit will likely take a few months to decide the issue. We will monitor this case closely and report any developements.

Some additonal articles on this topic can be found here (Patently-O) and here (JD Supra).