Jason Schultz, Brian Love, Jim Bessen and Mike Meurer have put together an excellent “Brief of Amici Curiae Law, Business, and Economics Scholars” in Alice Corp. v. CLS Bank, a case about to be argued before the US Supreme Court.
I signed this brief because I believe that the experience of the last 20 years shows that extending patent protection to abstract ideas and software functions does far more to impede innovation than it does to encourage it.
The U.S. Court of Appeals for the Federal Circuit has expanded the scope of patentable subject matter for abstract ideas over the last 20 years (see, In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) and State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998)). This expansion has lead to an explosion of software patenting and software patent litigation. Abstract patent claims award rights beyond the scope of actual invention, their boundaries are unclear, they don’t provide notice to third parties and, for all these reasons, they invite opportunistic litigation.
(See U.S. Gov’t Accountability Office, GAO-13-465, Intellectual Property: Assessing Factors That Affect Patent Infringement Litigation Could Help Improve Patent Quality 13 (2013), available at http://1.usa.gov/1gatCRr)
The Supreme Court granted cert in this case to decide “Whether claims to computer-implemented inventions—including claims to systems and machines, processes, and items of manufacture—are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101.” I expect the court to rule computer software is patent eligible, but that patent examiners should reject over-broad software patent claims on the basis of lack of patentable subject matter. As the divisions in the Federal Circuit’s en band decision show, it won’t be easy to develop a standard to determine whether a computer-implemented invention is a patent-ineligible, abstract idea.