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Update: en banc re-hearing for CLS Bank v. Alice

October 16, 2012

In a previous post, here, we noted the sharp division in the US Court of Appeals for the Federal Circuit on the issue of patent-eligible subject matter for computer-implemented inventions.  The Court will now have a chance to hash out those differences in an en banc re-hearing of the CLS Bank v. Alice decision.  The order granting the en banc re-hearing is here.

The two specific questions that are to be addressed in the re-hearing are:

  1. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?
  2. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?

The first question is interesting.  In Canada, the law since Schlumberger has been clear that implementing an otherwise unpatentable method by way of computer does not lend it patentability.  Many US cases make the same assertions; although those that prosecute US patent applications in this field will be familiar with the practice of some US Examiners, who will raise an objection under § 101 only to offer to withdraw it if the claim is amended to include reference to the operations being performed by a processor or computer.  A rigorous analysis of the factors for assessing “abstract ideas” listed in the USPTO’s own internal Bilski Guidance is rarely provided.  It is often not clear why the claim would have been improper subject-matter before the amendment, or why the amendment adding a “processor” should change the analysis.

The order for re-hearing in CLS Bank also comes as the Canadian Intellectual Property Office tries to finalize its own position on the patentability of computer-implemented inventions following the Amazon.com decision and the public consultation carried out by CIPO in 2012.

It may be too much to hope for, but perhaps there will be greater certainty for North America on the issue of patenting software and computer-implemented inventions in early 2013.