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Is Software Patentable? Recent US Case Law Offers a Glimmer of Hope
The Medium

Many inventions involve software, and many inventors are interested in protecting such inventions with a patent. The question is: are software inventions patentable?  Based on recent cases in the United States, the answer is: yes, software inventions may be patentable, but it depends on what the software does.
It remains a general rule, in patent law, that one cannot obtain a patent for an abstract idea. Over the years, patent claims for methods implemented by computers and software have been struck down by the courts, on the basis that merely using a general-purpose computer to implement an abstract idea does not make the abstract idea patentable. More recently, since the Supreme Court of the United States’ 2014 decision in Alice Corp. v. CLS Bank, a software patent case providing a revised test for determining what is patentable subject matter, most patents containing claims to software challenged in US courts have been struck down. The patent claims at issue in Alice were directed to a method for implementing an intermediated settlement between parties. 
However, as inventors know, software can implement methods which are technical solutions to technical problems. Such software-implemented methods may therefore rise beyond the level of merely implementing an abstract idea on a computer. Below are some examples of software patent claims which have been deemed patent eligible in recent United States Federal Circuit cases:

  • Software which solves a problem that only exists on the internet. In DDR v., the patent at issue addressed the problem that when a person browsing the internet clicks on an advertisement on a host website, the person is typically redirected to the advertiser’s website, causing the host website to lose internet traffic. The solution was to direct the person to a hybrid website upon clicking an advertisement, the hybrid website retaining the look and feel of the host’s website while containing the information from the advertiser’s website. 
  • Software which improves the functioning of a computer. In Enfish v. Microsoft, the patent at issue had claims directed to an innovative logical model for a database, including the creation of a self-referential table. Another example includes Amdocs v. Openet, in which the patents at issue included claims directed to gathering network information in an innovative manner, which improved the functioning of the network.
  • Software which automates a manual process. In McRo v. Bandai, the patent at issue had claims directed to the automatic synchronization of an animated character with an audio soundtrack. While some courts have held that merely automating a process that may be manually performed by a human is not patent eligible, in this case, it was found that the claimed process in which the computer performed the synchronization was different than the process followed by a human animator to manually perform the synchronization.

Today, it remains difficult to obtain a patent having claims directed to software, and even once a software patent issues, there is a possibility it could be struck down as patent ineligible if challenged in the courts. Adding to the uncertainty is a lack of higher court decisions in Canada, in recent years, involving the issue of software patents and subject matter eligibility. However, the recent US Federal Circuit case law helpfully provides examples of software patent claims that were upheld as patent eligible, at least in the United States, therefore giving future software inventors some guidance as to which software inventions may be patentable.