Download a PDF version of this article here. Simon J. Frankel and Ethan Forrest* Two recent decisions from the Federal Circuit in the long-running litigation between Oracle and Google have upended the scope of copyright protection afforded to software. In both decisions, the court weighed in heavily on the side of strong copyright protection, even protecting the relatively functional code… read more
A well-defined § 101 ensures that abstract software patent claims and their attendant notice and patent thicket problems do not undermine the patent system and stymie innovation. It serves as a decisive gatekeeper that the Patent Office and trial courts can use early in administrative proceedings and litigation. Further, it avoids many of the systemic challenges prevalent with the use of §§ 102, 103, and 112 in such cases—the speed of software innovation, the difficulty locating software prior art, and lax, broad claiming standards. Accordingly, this Court should affirm the invalidity of patent claims at issue here and hold that abstract ideas in the form of software are unpatentable and that mere computer implementation of those ideas does not create patentability.
Paul A. Ragusa and Jack Chen discuss the on-sale bar to patentability in the context of nascent software. They conclude that a simple investigation concerning whether software code was complete at the time of an offer for sale is insufficient to establish the critical date for the purposes under 35 U.S.C. § 102(b) (“Conditions for patentability”).