Supreme Court Ruling Will Help EU Software Providers Patent In The US

A Supreme Court ruling in a long-standing case will come as a relief to those seeking patent protection for software and business method inventions in the US, but it has failed to bring the clarity needed to stimulate investment.

The case, known as Alice v CLS Bank, focused on a number of patents owned by Alice Corp for an electronic system that facilitates financial transactions. The Supreme Court ruled that the patents could not be enforced because they are not eligible for patent protection. The Court took this decision on the grounds that the patents are based on an abstract idea which had been simply been computerised.

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The US has a much more flexible approach than Europe when it comes to granting patent protection for software-based inventions and business methods – the innovator simply has to show they are inventive, useful and not mere computerisation of an abstract idea. This is laudable and it is certainly good news that the Supreme Court hasn’t stepped back from this stance.

However, the ruling could have gone further. There was an opportunity here to bring greater clarity by introducing a clear test of eligibility to guide businesses and encourage them to invest in protecting their research and development in these areas.

The current lack of clarity makes it difficult to predict whether a specific invention is eligible for patent protection in the US or not. It also means that US patent system can get clogged up with applications.

What is now clear, however, is that if an innovation can be patented in Europe then it should have no problem seeking protection in the US. Innovative European, and in particular UK, software companies may also wish to review their innovation portfolio to consider whether they might be patentable, and therefore ripe for commercial exploitation, outside their domestic market.

This opinion was contributed by Karl Barnfather, chairman of Withers & Rogers, a UK-based patent and trade mark firm.

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