Finding the Point of Novelty in Software Patents

The issue of patentable subject matter eligibility is in considerable flux. In 2012, the Supreme Court set forth a confusing new framework for determining patent eligibility. The decision in Mayo v. Prometheus cast serious doubt on the continued viability of many software patents. Indeed, a split quickly emerged in the Federal Circuit. As a result, it was unclear whether adding computer limitations to an otherwise unpatentable concept somehow renders the concept patent eligible. In an attempt to settle this question, the Federal Circuit granted a petition to rehear CLS Bank Int’l en banc. But the judges could not find common ground and the decision contained seven separate opinions reflecting at least three distinct approaches. Thus, there remains a pressing need to find a common analytical framework for deciding software patent eligibility questions. There is a way out of current morass without departing from precedent. In Mayo, the Supreme Court implicitly revived long rejected point of novelty thinking. In earlier essay, I expanded on that approach and offered a general framework for making patentable subject matter eligibility determinations. This article applies this approach to software patents. Specifically, it explains that the key to determining whether a software patent covers eligible subject matter is assessing the strength of the connection between the patent’s point of novelty and physical devices found in the other claim limitations. This test serves to rein in harmful business method software patents without affecting more deserving industrial patents. Thus, the test is justified from both a doctrinal and policy perspective