The courts have gone back and forth in rulings about patentability of software-based inventions, sometimes ruling that a system that uses a computer and programming, a tangible media with computer instructions, or a method involving computers, software or processing, etc., is patentable subject matter under 35 U.S.C. §101, and sometimes that it is not. See, for example, Cybersource Corp. v. Retail Decisions, 654 F.3d 1366 (2011), CLS Bank International v. Alice Corp. (Fed. Cir. 2013) (en banc) which will be reviewed by the U.S. Supreme Court next year, and/or Ultramercial v. Hulu (Fed. Cir. 2013).

I’d like to set forth a thought experiment as a hypothetical case in favor of patentability of software-based inventions. Mind you, in an actual case, patentability will depend on a multitude of factors, such as whether the claimed invention is: a member of a patentable class of subject matter (the present inquiry, under 35 U.S.C. §101), novel (under 35 U.S.C. §102), unobvious (under 35 U.S.C. §103), and distinctly claimed, i.e., not indefinite, and enabled in the specification (under 35 U.S.C. §112), among other requirements.

This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.

To view this content, please continue to their sites.

Not a Lexis Subscriber?
Subscribe Now

Not a Bloomberg Law Subscriber?
Subscribe Now

Why am I seeing this?

LexisNexis® and Bloomberg Law are third party online distributors of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® and Bloomberg Law customers are able to access and use ALM's content, including content from the National Law Journal, The American Lawyer, Legaltech News, The New York Law Journal, and Corporate Counsel, as well as other sources of legal information.

For questions call 1-877-256-2472 or contact us at [email protected]