For the past several decades, the Supreme Court and Federal Circuit have struggled to determine if, and under what circumstances, software is patentable. Once again, the Federal Circuit had an opportunity to provide clarity when it granted en banc review in CLS Bank. The resulting opinion contained a cursory per curiam decision and numerous concurrences and dissents, showing that the question is far from answered. Ultimately, the struggle over software patentability is not itself the problem, but a symptom of other problems in the patent system. Specifically, other substantive requirements of patentability are not weeding out overly broad patents because the person having ordinary skill in the art (PHOSITA) of software is assumed to be extremely skilled. Where PHOSITAs are highly skilled, the US Patent and Trademark Office (USPTO) allows broad claims based on minimal disclosure. By repairing the conception of the PHOSITA in the courts, the USPTO can issue narrower, less-restrictive patents. Once claim scope is adequately limited and more thorough disclosure required, the courts can return the patentability analysis to the permissive one in State Street Bank, ensuring public access to the invention and removing the cloud of suspicion that currently hangs over software patents.
From State Street Bank to CLS Bank and Back: Reforming Software Patents to Promote Innovation,
16 Vanderbilt Journal of Entertainment and Technology Law
Available at: https://scholarship.law.vanderbilt.edu/jetlaw/vol16/iss2/6