Patent Eligibility of Software Related Inventions in Light of the Alice v. CLS Bank Decision

• Main Authors: Liang-Ru Qiu, 邱亮儒
• Other Authors: 陳龍昇
• Format: Others
• Language: zh-TW
• Published: 2016
• Online Access: http://ndltd.ncl.edu.tw/handle/x5bstk

碩士 === 國立中興大學 === 法律學系科技法律碩士班 === 104 === Whether software related inventions should be protected by patents is debatable. If the answer is positive, how to establish a reasonable standard of determination? Computer software is essentially composed of mathematical formula, algorithms, and human mental activity which fall into patent ineligible abstract idea or principle. Providing patent protection to computer software could bring a negative impact to society. This is contradict to the purpose of patent system. After the State Street Bank v. Signature Financial decision, the Court of Appeals for the Federal Circuit adopted the “useful, concrete, and tangible result test” and the United States Patent and Trademark Office granted thousands of software patents and lead to many bad quality patents were issued, patent troll, patent thicket, etc. The U.S court have to ponder over the issues that and software related inventions be mindfully protected by patent. Consider how to protect software patents correctly, set the scope of abstract idea, and establish proper standard of patent eligibility test. It have to strike the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles, and achieve patent''s purpose that encourage invention and promote technology and industry development. The 2014 Supreme Court Alice v. CLS Bank decision set forth a two-step framework to determine the patent eligibility. The framework is used to distinguish patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. The first step, is to determine whether the invention covers an judicially recognized exceptions and Secondly, is to determine whether the invention adds “significantly more”. The courts have described step two of this analysis as a search for an “inventive concept” i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the judicially recognized exceptions itself. While a software patent will usually be deemed as covering an abstract idea, there are three factors that will help determine whether the invention adds significantly more: (a) whether the patent is directed toward a new and unique idea and not simply automating what others have accomplished without the use of a computer, and (b) whether it serves to advance technology. After the Alice’s decision, The USPTO released a guidance memorandum to the Examining Corps instructing how to implement the Alice standard on June 25, 2014. Following Alice, 830 patent applications were withdrawn from the USPTO between July 1 and August 15, 2014. One year since its issuance, the Alice decision has been applied by the PTAB, district courts, and the Federal Circuit to invalidate or reject software-based patent claims resulting in a total of 286 invalidations out of 345 patents or patent applications. With few decisions upholding patent-eligibility, the post-Alice trend has been overwhelmingly against software-based patent claims with an average invalidation rate of 82.9%. The statistics illustrate Alice effects American experiences and plays an important role in patent eligibility for software related inventions. Alice is also considered to be the most representative of the Supreme Court of the United States in 2014. Given that the change of Taiwan''s patent law usually refer to the development of American experiences and Taiwan''s software related industry have need for patent application in the United State. This article review Alice’s decision, the effect of Alice, the development of Taiwan''s software related inventions and provide some recommendations for future software patent applicants according to the development trend of patent eligibility for software related inventions.