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A Proposal to Revise the Alice Test for Software Patents



Most human innovations begin from an abstraction, a judicial exception that by itself is not patent-eligible. Abstract ideas are considered basic tools of scientific and technological work, which courts prefer not to award with a monopoly because exclusive ownership of these essential elements would only serve to hinder economic and innovative progress. The problem concerning patent eligibility under §101 is that we do not have any measurement or indicator to differentiate when a claim consists of only an abstract idea and when a claim does not. Currently, courts rely on precedent that is ambiguous rather than relying on more concrete measures based on the specific type of underlying software. Lacking this measurement, coupled with inherent software complexity, has resulted in inconsistent jurisprudence that is often inscrutable. These inconsistencies in the jurisprudence of cases involving computer programs stem from lacking a proper framework based on the functional nature of computer programs. There are several different proposals with inconsistent explanations as to how to apply the judicially created framework in determining patent eligibility. Still, none of them suggest a practical test specifically for software fields based on the functional nature of computer software to solve the patent eligibility problem. Additionally, proper disclosures are needed to combat high invalidity rates due to the lack of quality of patent applications.

This study addressed the confusion regarding the existing judicial framework (Alice’s framework) in determining patent eligibility (§101) of software inventions. It proposed a new framework for determining patent eligibility in which the meaning of an abstract idea is defined in a practical way, as routine building blocks, based on the functional characteristics of software programs. These routine building blocks are not patent-eligible because the only embodiment is its fundamental components that are common in all inventions in that type of software. Granting any patent to claims of these essential elements will preempt other’s innovative progress in that specific type of software. The functionality of this framework was tested on some software patent cases dealing with the §101 issue, as well as on one actual AI (Artificial Intelligence) pending patent application. Additionally, this study suggested proper disclosures through examples to improve the quality of patent applications by specifying some factors that might affect the validity of a software patent regarding the sufficiency of its disclosure.

Giving robust indicators to the patent examiners, judges, jurists, patentees, and practitioners to increase the certainty of predicting the outcome of the case based on the content quality of the underlying claims is the main contribution of this study. The result is significant because, with this legal paradigm, the unavoidably subjective assessments of computer programs in determining patent eligibility are formalized.

Keywords: Intellectual Property, Software Patent, Abstract Idea, Alice Test, Patent Eligibility Test, Sufficient Disclosure, Artificial Intelligence, Building Blocks, Section 101, Section 112, U.S. Patent Act.

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