Programming Is Not Patentable

U.S. Supreme Court ruling takes a modest step forward, but not the giant step everyone had hoped for.

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I have written about problems with the patent systems several times in the past and have also talked about a very important case that has been making its way through the courts. This one case, Alice Corp versus CLS, has been particularly closely followed because of the importance of its conclusion on software patents. On June 19 the Supreme Court came to its conclusion, and as happens so many times, the ruling was not an earthquake in the law governing patents, or the mighty upset that some predicted for the software industry, but another ruling based on common sense and making the smallest possible change to resolve the issue at question.

Now, before I get into any details, I should state clearly that I am not a lawyer, although I have written several patents, and I have been deposed on several occasions and acted as an expert witness both within the ITC and the regular courts. So, I am not an expert on the law, but I do know how to read and interpret patents.

The crux of the ruling appears to be that if an idea was not patentable in the first place, then adding ‘implemented on a computer’ does not suddenly make it more patentable. This to me is quite reasonable. We have always had the notion that software was copyrighted, and so the implementation was protected in that manner. It is also possible to write code that implements an algorithm in many different ways, with each implementation having certain qualities about it, but none of those implementations adding anything to the underlying algorithms and methods that represent the invention. In the words in the opinion, ‘merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.’ The coding is only a means of turning the concept into something that can execute on a computer and so coding is not patentable. Note that the statement does say generic computer, meaning that when a special purpose computer is involved, they may come to a different conclusion.

Laws of nature, natural phenomena, and abstract ideas are not patentable, and that has long been the case. This ruling has made it clear that turning one of these into software does not make it less abstract. At the same time, many patents are based on abstract concepts, and this is often where the difficulty comes in. Eligibility for a patent has to demonstrate that one or more abstract notions are combined together in a novel way such that it creates more than was present in the individual parts.

It would thus seem as if this ruling will have no significant impact of the semiconductor or EDA industries at all. It will have an impact on a patent that I discussed in my blog back in February from IBM. This was interesting in that they attempted to patent the action of a patent aggregator. When the patent was first filed it was rejected and they had to add the wording:

A computer program product comprising a permanent and durable computer useable medium having a computer readable program, wherein the computer readable program when executed on a computer causes the computer to execute a method for extracting value from a portfolio of assets, the method comprising…

This is an example where the abstract notion of extracting value from a patent portfolio was deemed to be un-patentable, but by adding – implemented on a computer – that patent was approved. Now, it would seem to me that the Supreme Court has ruled that if the original concept was not patentable, then with this modification it should have remained unpatentable. So while some had hoped that the ruling in the case would have reduced the power of patent aggregators, at least one patent that applied to them may now be deemed to be invalid.

What may have been reduced are the number of frivolous patents that define an abstract concept that is ‘implemented on a generic computer’ and aggregators suing companies with the hope that paying up is cheaper than fighting. Thankfully, we have seen little of that in our industry, and maybe it will let our customers spend a little less on lawyer’s fees, meaning there is more available to pay for EDA tools.