The NYIPLA Advocates for Clarification

November 1, 2013 Published Work
NYIPLA Bulletin, October/November 2013

In a world that now relies on computers for everyday tasks, the area of software and computer-implemented inventions has become essential for innovation. However, it is difficult to define what falls within the scope of a patent-eligible com­puter-implemented invention under the current legal guidance. Indeed, even the appeals court dedicated to providing uniform standards on patent law, the U.S. Court of Appeals for the Fed­eral Circuit ("Federal Circuit"), is having a difficult time ap­plying the well-established "abstract idea" exception to patent-eligible subject matter.

In an en banc rehearing, the full court at the Federal Cir­cuit remained highly divided as to the proper approach to take in analyzing whether a computer-implemented invention is patent eligible under 35 U.S.C. § 101. See CLS Bank Int'l v. Alice Corp., 717 F.3d 1269 (Fed. Cir. 2013) ("CLS III"). Unpredictability in the patent system is harmful to the U.S. economy as well as the patent system as a whole. Judicial clarity and reliability are important parts of a functioning pat­ent system. For these reasons, although it did not take a posi­tion on the ultimate validity of the claims at issue, the NY­IPLA submitted an amicus curiae brief in support of Alice's petition for a writ of certiorari to urge the Supreme Court to clarify the abstract idea exception to patent eligibility as ap­plied to computer-implemented inventions.