The Patent Eligibility Of Computer-related Inventions

To be eligible for a U.S. patent, an invention must meet several criteria. Subject matter eligibility is defined in 35 U.S.C §101, which provides that any “process, machine, manufacture, or composition of matter” or improvement thereof may be eligible for a patent. Section 101 is considered to be the first requirement to meet for determining the eligibility of an invention,which should be given more scrutiny by Section 102 and 103,which discusses novelty and non-obviousness respectively.For decades of years, U.S. patent attorneys, software engineers, examiners, and judges have debated the patent eligibility of computer software. U.S. Supreme Court has set a couple of tests to determine the eligibility of software and intended to clarify the scope of patent protection. However, disagreements and confusions still exist,and there remains a pressing need to find a common analytical framework for deciding software patent eligibility issues. Recent Supreme Court cases have given us a hint of how to end this murky morass. The Court implicitly revised and then applied a new test for solving questions.However, when we look at China’s Examination Guidelines for Patent, we cannot find a clear framework for software patent eligibility examination, nor do we have a particular, flexible patent policy for computer software. From the American practice, we know that a clear patent eligibility standard for computer software would help to cut down on patent litigations and disputes, and a more open software patent policy would encourage the innovation of enterprises. This Article expands on the approach used by U.S. Supreme Court and tries to offer a general framework for making patentable software eligibility determination and application by reviewing recent software patent eligibility cases from CAFC and the U.S. Supreme Court.Part One defines the meaning of computer software. We can learn from the classification of software in Examination Guidelines for Computer-related Inventions issued by USPTO, in order to clarify the concept of software-related inventions and to revise China’s Examination Guidelines for Patent.Part Two reviews American judicial precedent and analyzes the recent American software patent eligibility cases, some of which the court upheld software’s eligibility and some of which rejected, revealing the changes in test application and software patent eligibility policy of the United States.Part Three proposes a standard which intends to provides clarity for software patent eligibility issue. This part tries to improve the approach implicitly used in the CLS Bank v. Alice Corp case and Mayo v. Prometheus case by the U.S. Supreme Court so that we can find a framework that can be commonly applied to our cases.Part Four summarizes the problems we still have and gives several advices on China’s software patent eligibility issue and our patent policy. This part, in short, advices that we learn from American’s experiences and build a more clear and applicable framework.