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Robert Unikel Discusses Oral Arguments in Software Patents Case in InsideCounsel

April 1, 2014

As seen in InsideCounsel’s “Alice Was Asked Aplenty”

InsideCounsel reports that the United States Supreme Court recently heard oral arguments in Alice Corporation v. CLS Bank International, a case that centers around the question of whether computer software is patentable, or if the ideas involved are too abstract to be patented.

According to Kaye Scholer Intellectual Property Partner Robert Unikel, a key question asked during the arguments concerned whether an invention could be separated into a computer portion and a method portion, and if so, whether there is “something new or unique about either portion once separated.”

Some of the justices questioned whether the use of a computer to execute a business method was patentable; several justices also indicated that they may support eliminating business method-related patents altogether, software or otherwise.

As Unikel puts it, “There is a limit on what business methods can be patentable.” However, he pointed out that in the related Kappos v. Bilski decision, “the Supreme Court rejected the argument that any patent in business methods should automatically be excluded from patentability.” Because of the court’s previous rejection of such a general rule, “the Supreme Court is unlikely to categorically exclude software patents from patent eligibility,” said Unikel.

The case also poses the question of whether these is a practical way to determine if an idea is too abstract to be patentable. Unikel said that “the Supreme Court may leave that up to lower courts, even though the Supreme Court took the appeal in Alice to give lower courts some guidance and clarity where there was chaos.” However, he noted that it can be difficult to come up with a test that qualifies which abstract ideas are not eligible to be patented, adding, “You are often left with, ‘You know it when you see it.’”

Unikel said that confusion on the topic may continue, adding, “If the responsibility is left to the Federal Circuit, it could mean that the software industry will remain in a continued state of uncertainty regarding what, if any, types of software inventions are patentable as, right now, the judges on the Federal Circuit have advanced very different views on how the abstract ideas exception applies to software inventions.”

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Robert W. Unikel
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