Patenting Software

• Author: Elizabeth Rodriguez - Sean Solberg
• Pages: 101-121

Eric W. Guttag1

For almost 50 years, the courts, as well as the U.S. Patent and Trademark Ofce (USPTO),

have grappled uneasily with the question of how computer software may be patented

—and even whether software is patentable at all.2 The Supreme Court’s 2011 decision

in Bilski v. Kappos sheds little light on how software might be patented, other than that

it could not be simply a claim to an “abstract idea.” The lengthy, tumultuous, and frac-

tured Federal Circuit decision in the en banc rehearing in CLS Bank International, Inc.

v. Alice Corp., now pending before the Supreme Court, has not made decisions on how

software may be patented any easier for the public generally, and technology transfer

ofces specically. More recently, we have seen conicting Federal Circuit panel decisions

in Ultramercial after a remand from the Supreme Court and in Accenture Global Services,

which do little to clarify things.

University technology transfer ofces are increasingly tasked with managing computer-

implemented technology that arises in the conduct of research.3 University technology

licensing ofcers (TLOs) and the patent practitioners who support them need to understand

the impact of these cases if they are to successfully protect these software technologies

1. Patent and trademark attorney Eric W. Guttag is a solo practitioner in West Chester, Ohio. This chapter

reects the personal views and thoughts of Guttag and is not to be construed as representing in any way the

views, opinions, or practices of the Eric W. Guttag IP Law Ofce or any of its clients. The content is solely for

purposes of discussion and illustration and is not to be considered legal advice.

2. See Michael Risch, Forward to the Past, C S C R 333 (2009-2010) (discussing pat-

entability of software and business methods from Gottschalk v. Benson to Bilski v. Kappos).

3. See Doug Hockstad, Software Licensing, AUTM T T P M, Vol. 3, Part 3

at 3 (3rd Ed. 2010) (noting that “[p]atents on software do have value in certain situations”).

101

Chapter 5

Patenting Software

The En Banc Ruling in CLS Bank International, the

Ultramercial Remand Decision, and Beyond

with patents. Given the growing trend over the last ten years for venture-backed software

startups to pursue patent protection, TLOs should consider whether such lings could be

a strong differentiator in the marketplace. How pervasive is this focus on software pat-

ents? It is signicant enough that the latest version of the GNU General Public License

version 3.0 now includes a patent license grant.4

I. Early Cases

For many years, the courts, as well as the USPTO,5 have addressed this question of pat-

ent eligibility of computer software. Part of the problem with whether or not computer

software is patentable lies in dening what computer software is. Computer software

has a somewhat ubiquitous multifaceted character. On the one hand, software may have

the primary attributes of a “process.” On the other hand, software may potentially be

a “product” when it is recorded or copied to hardware, such as a hard disk, oppy disk,

CD-ROM, ash drive, etc. Indeed, in some instances, software may even function more

like a “machine” in how it controls the operation of a computer.

6

For the purposes of this

chapter, the terms “software” and “computer software” (which may be used interchange-

ably) dene “any form of programmed machine-readable language or instructions (e.g.,

object code) that, when loaded or otherwise installed, provides operating instructions

to a machine capable of reading those instructions, such as a computer or other type of

computer program reader.”7

Further complicating the question of when (or if) software is patentable is that a great

many court cases that have been characterized as involving the patenting of software do

not actually involve software, or only very tangentially. The divided en banc ruling in CLS

Bank International, Inc. v. Alice Corp.8 epitomizes the problem of separating out other

4. GNU P (June 29, 2007), https:// www .gnu .org /copyleft /gpl .html.

5. See U.S. P  T O, M  P E P § 2106 (9th ed. 2014)

[hereinafter MPEP], which contains the USPTO’s current guidelines on addressing subject-matter eligibility,

especially MPEP section 2106(B) (Practical Applications of Processes (Methods)), which addresses much of the

subject-matter eligibility issues relating to software inventions, as well as MPEP section 2106.01, which provides

the analytical framework for determining which subject is or is not eligible for patenting.

6. See Eric W. Guttag, When Offshore Activities Become Infringing: Applying § 271 to Activities That “Straddle”

Territorial Borders, 14 R. J.L.  T. 1, ¶ 19 (2007), available at http:// law .richmond .edu /jolt /v14i1 /article1

.pdf (discussing the problem of classifying software as a “component” under 35 U.S.C. §§ 271(f)(1) and 271(f)(2)).

7. See, e.g., U.S. Patent No. 8,456,705 col. 13 ll. 18–24. See also Software, W, http:// en .wikipedia

.org /wiki /Computer _software (last visited June 10, 2013), which denes “software” as “any set of machine-

readable instructions (most often in the form of a computer program) that directs a computer’s processor to

perform specic operations.”

8. 717 F.3d 1269 (Fed. Cir. 2013) (“en banc” means a rehearing by the entire bench of the Federal Circuit

to reconsider a decision of a panel of three of its judges). The petition for certiorari by Alice Corp. (the patent

owner) to have the U.S. Supreme Court review the Federal Circuit’s en banc ruling in CLS Bank International

was granted December 6, 2013. 134 S. Ct. 734 (Mem), 187 L. Ed. 2d 590 (Dec. 6, 2013).

ERIC W. GUTTAG102