The Looming Battle Over Software Patents — and How to React

For 170 years, an unbroken line of Supreme Court cases has stated that a patent is invalid if it attempts to cover the results of an invention. However, the US Court of Appeals for the Federal Circuit, which hears all patent appeals, has recently allowed software companies to patent relatively broad results.

It’s only a matter of time before this tension disrupts the way software and computer-implemented inventions are protected.

At some point, the Supreme Court may maintain its approach and overturn the Federal Circuit – or it may soften its historical view and allow much broader use of results in patent claims.

Samuel Morse and His Telegraph Patent

As you may know, Samuel Morse invented the telegraph. In the mid-1800s he obtained a patent that (I’m paraphrasing) covered “all machines for electrical communication.”

Nice patent!

But unfortunately for Sam, in 1854 the Supreme Court ruled that his claim was too broad, because it covered what it did (used electricity to convey information) rather than what it was (wire between two points and a telegraph key).

Other rulings over the years by the Supreme Court have confirmed this general position and have been quite specific in outlining a “rule” against patents that attempt to cover a result or function (aka “functional claiming”).

Today’s Software Patent Claims

Let’s fast forward to today, where many software patents are broadly written in terms of the result of data-processing, rather than the specific steps that are taken to process the data. The Federal Circuit has generally permitted these software patents with broad functional claims.

The Looming Conflict

No case has yet made it to the Supreme Court to test this conflict between the Supreme Court’s historical and clear rule on all patents, and the Federal Circuit’s recent and more permissive approach to software patents.

It’s only a matter of time before the Supreme Court does hear a case challenging broad functional claims in software patents. The way in which the Supreme Court rules in such a case could either weaken many broad software patents, or further embolden broad patent holders’ claims against potentially infringing competitors. 

Upshot - Implications for Software Entrepreneurs

So what should a software entrepreneur do, to ensure that your patents are not invalidated or weakened based on a future potential ruling, while not knowing which way the Court might rule?

In a nutshell – again simplifying – if you own or are considering applying for software patents, it’s a good idea to draft claims that could continue to provide coverage, no matter which way the Supreme Court rules in a future case. For example, you may continue to pursue broad functional claims, but also include narrow claims that closely track your disclosed invention.

Please reach out if you’d like to discuss how this might impact your company, or the specifics of drafting software patent claims in today’s environment. Email me here.