Last week, in Alice Corp. v. CLS Bank Int’l, the Supreme Court held that you cannot patent the combination of (a) a known fundamental procedure or formula and (b) a known computer configuration used to automate the application of the procedure or formula. Because many software inventions fall under this description, the Supreme Court’s decision means that many software inventions are likely not patentable — and that many software patents issued before Alice are likely invalid.
What Alice says
The Supreme Court has long held that “laws of nature, natural phenomena, and abstract ideas” are not patentable, but that “applications of such concepts to a new and useful end” are patentable. Op. at 5-6. Alice is about how to tell the difference between an abstract idea and a patentable application of an abstract idea.
Alice sets out a two-part test: (1) does the invention involve an abstract idea; and (2) if so, are the other elements of the invention inventive independent of the abstract idea. Op. at 7. If yes, the invention is patentable; if not, not.
Alice does not set out a test for determining whether something is an abstract idea. We know from Alice and the Court’s earlier cases that long-existing and widespread economic or commercial practices (hedging, intermediated settlement, payroll, double-entry accounting, etc.) are abstract ideas. Op. at 8-10. Mathematical formulas and algorithms are also abstract ideas. Op. at 8. But the Court does not offer any definition beyond examples like these.
Even if an invention involves an abstract idea, it may be patentable if it satisfies the second part of the Alice test, that is, if the other parts of the invention are independently inventive. The operative holding of Alice is that adding “on a computer,” or other words to the same effect, does not satisfy this test. Op. at 13. If your invention is the automatic application of an abstract idea on a computer, and nothing else, then your invention is not patentable under Alice.
This is the holding that clarifies the law around software patents.
What Alice doesn’t say
Alice doesn’t say how to tell when something is an abstract idea. But it does explain that the reason for this exception from patentability is the fear that patents on abstract ideas will sweep too broadly, will remove from use basic building blocks of future inventions, and will, in doing so, retard the invention that patent law is supposed to promote. The definition suggested by this reasoning is that abstract ideas are those whose protection is likely to retard invention more than promote it; ideas that are well known and longstanding, ideas that are new but basic (“laws of nature”) to a field, and the like would be abstract ideas under this definition.
Alice also doesn’t say how much more than implementation on a generic computer would qualify as an independently inventive part of the invention. Implementing an abstract idea on novel hardware — computer components that were themselves genuine inventions, like a working quantum computer — would qualify. But how far short of that can you go? How about implementing an abstract idea on a known hardware configuration, but where the choice of that hardware configuration (or network or system architecture) is a genuine invention? Document-based databases; fast, redundant solid-state storage; and cached web servers may all be known, but might the choice of this architectural combination as the one on which to run a new search algorithm be patentable even though the new search algorithm is an abstract idea?
The questions after Alice are whether a sufficiently narrow algorithm or computational method can be for that reason not an “abstract idea”; and whether, if it is one, a choice or configuration of computing hardware that makes the algorithm or computational method particularly effective can make it patentable even though the configuration (as opposed to its selection for this use case) is not itself new.