However, Many Computer Implemented Inventions Remain Patentable Subject Matter
- Due to the complexities of navigating the laws around patent-eligible subject matter, it is now more important than ever to examine the patentability of a given technology upfront, and have a thoughtful patent strategy before filing any patent applications.
- The Supreme Court reiterated that laws of nature, natural phenomena, and abstract ideas are not patentable. However, practical applications of such concepts may be patentable.
- The Court did not eliminate software patents per se, but emphasized that “generic computer implementation” of general business processes will not be considered patentable subject matter without something more.
- Some commentators, including former USPTO director David Kappos, have suggested that the decision actually strengthens the case for software patents.
- Patent claims that meet the machine-or-transformation (MoT) test, such as the automated tire manufacturing process in the 1981 Supreme Court case of Diamond v. Diehr, are still the strongest candidate for patenting computer-implemented inventions.
- Patent claims that “improve the functioning of a computer itself” were mentioned as possibly viable candidates for patentability. Patents that effect improvements to “other technology or technical fields” also remain viable.
- Entities with patent applications that are pending or in process of preparation should review their applications to assess whether corrective filings are possible to make the claims more likely to pass muster under the decision.
Copyright 2014 John R. Harris. All Rights Reserved.
The information presented and contained within this article is provided as general information only, and does not, and is not intended to constitute legal, employment or tax advice. Any opinions expressed within this article are solely the opinion of the individual author(s). For more information, contact John Harris: [email protected].