By LPS.1 - Own work, CC0,

When is an invention “Technological”? And why does it matter?

When can software get patents?
It still isn’t clear.

In the wake of the US Supreme Court’s decision in Alice v. CLS Bank, lower courts have struggled to define when software-implemented inventions are or are not patent-eligible.

Recently, we blogged about the McRo case, in which the Federal Circuit concluded that the claims of software patents for synchronizing the lip movements of animated were not abstract and were patent eligible.

But in another recent software patent case, Sound View Innovations v. Facebook, Inc., a federal district court reached the opposite conclusion.

Sound View sued Facebook for allegedly infringing several of its patents. One of the patents describes managing electronic “community interest” or “community information preference”:

Employing (1) the information preferences of an individual user, (2) the information preferences of other users in pre-defined relationships to that user, and (3) at least one decision rule for each user, the claimed invention distributes electronic information from information sources to the individual user’s terminal.

Facebook argued that the patent claims were directed to “the abstract idea of managing information and preferences among members of a community.”

Facebook also argued that the invention was abstract because it could be performed mentally or using pen and paper.

The court agreed with Facebook:

The asserted claims of the … patent thus are directed to the concept of offering more meaningful information to an individual based on his own preferences and the preferences of a group of people with whom he is in pre-defined relationships. The claimed concept is abstract.

Also, the court found that the invention “seeks to make a non-technological improvement to the non-technological problem of providing a user with information that is better suited to the user.”

The court cited the Supreme Court’s decision in Bilski v. Kappas:

[T]he prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant postsolution activity.

Under the European Patent Convention (EPC) “programs for computers” aren’t patent-eligible. Although some software-related patents may be granted, the European Patent Office (EPO) subjects software-related patent applications to even more scrutiny than the US Patent Office does.

One interpretation of European patent law holds that a software-related invention is patentable if it provides a new and non-obvious “technological” solution to a technical problem.

This “technological” effect must go beyond the normal interaction between the computer and the program.

However, there’s no clear definition of what a qualifying “technological” invention is in the software field.

It’s likely that patent offices and courts in both the US and the EU will be struggling with software patents for some years to come.

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