Eligibility of Patenting Software-Confusion at the Federal Circuit In the recent opinion of CLS Bank International v.

Alice Corporation, the Federal Circuit, en banc, demonstrated that even they cannot agree on whether a software invention is patent-eligible, i.e., whether an inventor can even file a patent application on such an invention. The fractured opinions were directed at both system claims and method claims of a patent application directed to a computerized trading platform invention. The district court concluded that both types of claims were patent ineligible because those claims prevented all practical use of the abstract idea of a neutral intermediary to facilitate simultaneous exchange of obligations in order to minimize risk on any computer. At the Federal Circuit, some judges concluded that both the system and method claims were both patent ineligible, while other judges determined both were patent eligible. Other judges agreed that the method claims were patent ineligible but that the system claims were patent eligible. Take away: Computer-implemented inventions will most probably remain patent-eligible under 35 U.S.C. 101 so inventors should not be discouraged from seeking patent protection simply because the invention is computerimplemented. While system/apparatus claims should most definitely be included in the patent application, the question as to including method claims is less certain in view of the various opinions. The strongest arguments made for the patent eligibility of the method claims, by Judge Linn, were based upon the district courts incorporation of the computer-implemented limitations of the system claims into the method claims. As such, when drafting method claims for such software patent applications, the method claims should include some level of computer-implementation, other than token pre- or post-

solution activity-such as identifying a relevant audience, a category of use, field of use, or technological environment. Finally, applicants should continue drafting specifications/claims that provide strong technical distinctions over the prior art in compliance with 35 USC 112, 102 and 103 because it is those provisions rather an 101, as Judge Newman emphasized, that will be determinative of patent validity. If you have any questions or comments regarding this news brief, please contact the author, Scott Slomowitz.

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