In a major new development, the International Association for the Protection of Intellectual Property (AIPPI) has adopted a resolution favoring patent-eligibility of computer software inventions, also known as “computer implemented inventions” or “CII.”

I. Background of widespread confusion about software or CII patents

The patent systems of the world are in a state of confusion and disarray over software or computer-implemented invention (CII) patents.

The AIPPI resolution on CII patents adds nothing new, yet it serves a normalizing function in restating  the law of software patents.

When the AIPPI standard is followed, the world’s patent systems will run more smoothly, consistently, and predictably. After all, the goal of every patent system is to promote the progress of technology. Meritorious patents should be allowed to issue without undue, repeated, unpredictable rejections.

In the U.S., reference is usually made to “software patents,” while in Europe and other parts of the world, reference is made to “computer-implemented inventions (CIIs).” The real debate is over treatment of computer software programs, there being less confusion over hardware inventions.

Alice and abstraction

In Alice v. CLS Bank (U.S. 2014), the U.S. Supreme Court held that “abstract ideas” are not eligible for patent unless an elusive “something more” is added. Four patents on financial trading systems were struck down as ineligible for patent protection. The Court held that there is nothing new about the claimed methods of reducing “settlement risk” through the use of escrow accounts, which the Court described as well-known, routine and conventional. The Court declared that merely saying “run it on a computer” is insufficient for a computer program to rise to the level of a patentable invention.

Patent examiners are taking Alice as a cue to reject software patent claims as mere “abstract ideas.” The problem with Alice is that it’s circular. Every invention is based, at some level, on basic scientific principles that can be called abstract. When claims are characterized as routine and conventional, they typically also are spit out by examiners on grounds of alleged ineligibility. This conflates eligibility with other statutory requirements.

It would be better to recognize that eligibility is a relatively low threshold: When a claim is directed to an alleged improvement in technology it is eligible for patent. The examiner should admit as much and proceed to assess novelty and non-obviousness, which also are requirements for a valid patent.

Europe and subtraction

In the European Patent Convention (EPC) and other jurisdictions, computer programs “as such” are declared by statute to be ineligible for patent. In actual practice, however, most computer-implemented inventions (CIIs) are found to be eligible for patent, but in the European approach, everything that is deemed non-technical is disregarded. The result is that software claims are found to be eligible for patent but lacking in the required inventive step.

AIPPI to the rescue

AIPPI recognizes that patent claims that purport to solve a technical problem should be eligible for patent. Eligibility should not depend on assessment of the prior art or determinations of novelty and non-obviousness, though examination for the latter criteria should be made before a patent is allowed. All issues should be decided by the examiner for complete review in a single appeal if necessary.

The newly published AIPPI resolution on CII patents was adopted after more than a year of study and exchange of views and information between 44 leading national groups of AIPPI. The U.S., Europe (Germany, France, U.K.), China, Japan, and South Korea all participated. See Summary Report of AIPPI. The work culminated at the recent AIPPI World Congress in Sydney, Australia. I was there from the starting line in Milan to the finish line in Sydney.

II. Computer-implemented inventions (CII) that contribute to at least one field of technology should be eligible for patent

The AIPPI resolution begins by recognizing the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), a longstanding international legal agreement between all 162 member nations of the World Trade Organization (WTO). The TRIPS agreement reflects legal, economic, and practical considerations, and it concludes that patents should be available, and patent rights enjoyable, without discrimination, for inventions in all fields of technology. One such field of technology is computer-implemented inventions (CIIs).

AIPPI embraces the principle of non-discriminatory patent protection for inventions in all fields of technology, and it resolves that there should be “no general exclusion from patentability of CIIs, including computer programs.” The AIPPI resolution makes a clarification, however, in stating that the invention must make a contribution to to at least one field of technology. We say at least one field of technology to recognize the fact that some inventions draw from multiple technical disciplines. Such cross-fertilization, when it occurs, is a good thing, though it is not essential to patent-eligibility.

III. CII or software patent claims should be examined using the same criteria as applied to other kinds of inventions

The patent laws of most nations are, at their root, remarkably consistent and well defined. In all jurisdictions, patent claims are examined for novelty and non-obviousness (or “inventive step”). These requirements are set forth in the U.S. patent law at 35 USC 102 and 103, respectively. Application must be made in the name of the inventor, see 35 USC 102, and the invention must be fully disclosed and distinctly claimed, see 35 USC 112. These parts of the patent law being well settled, there is no reason for restatement of the same in the CII resolution. Accordingly, the AIPPI resolution simply states that CII patent claims should be examined using the same criteria as applied to other kinds of inventions.

IV. Eligibility of a CII for patent protection should not depend on the prior art or any assessment of novelty or inventive step

The U.S. patent system, in particular, is making a jumble of the law of software patents by confusing eligibility with patentability. As stated above, and as generally recognized by the courts, software inventions are just as eligible for patent protection as hardware inventions. As mentioned above, the AIPPI resolution does require that a patent-eligible claim must define an alleged contribution to at least one field of technology.

It will be seen that eligibility of software (or CII) for patent protection should not depend on the prior art or any assessment of novelty or inventive step, the latter determinations being made as separate inquiries in examination before a patent will be allowed to issue. The AIPPI resolution on CII patents so holds.

V. Eligibility should be decided on a claim by claim basis, and in relation to each claim as a whole

Last but not least, the AIPPI resolution on CII patents makes clarifications on two points sometimes missed by patent examiners and courts.

First, eligibility should be decided on a claim by claim basis. It is insufficient for a decision-maker to say that claim 1 is ineligible and, in the same stroke, to wipe out all other claims without further, separate consideration of the eligibility of each claim. Even if claim 1 fails to define an alleged contribution to a field of technology, other claims might go into more specifics and might very well be eligible for patent protection.

Secondly, AIPPI holds that each claim should be considered “as a whole,” that is, without the cutting and shredding of claims that occurs in some examinations. In the latter unfortunate and unlawful approach, each cut-and-shredded claim element is held up to the light separately and found to be lacking. It has been seen that after cutting and shredding and elimination of so-called non-technical features, it is all too easy for an examiner or a court to conclude that nothing is left that can be considered eligible or patentable. On the contrary, the principle of considering claims “as a whole,” deeply etched in 35 USC 103 and other patent laws, should be applied uniformly.

The AIPPI resolution on CII patents concludes with an acknowledgement that CII patent claims can be presented in any of several commonly accepted forms.

Conclusion

The new AIPPI resolution restates the law of CII or software patent law, making it clear that software claims are eligible for patent protection so long as they define an alleged contribution to a field of technology. Each such claim should be examined as a whole for eligibility and for other criteria, including novelty and non-obviousness (inventive step), before the claim is allowed to issue in a patent.

 

Acknowledgements: John Osha, Ralph Nack, Richard Browne, David Hill, Bea Koempl-Thomas, Dan Brownstone, and many other AIPPI colleagues from around the world, especially the delegates from U.K. and France, for their work and collaboration on the CII resolution. Any errors in this post are solely attributable to this writer.