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Hello, World? Domestic Software Patent Protection Stands Alone Due to Uncertain Subject Matter Eligibility Jurisprudence

By Maxwell H. Terry. Full Text.

In the last sixteen years, software-related inventions have en- compassed the majority of all utility patents issued in the United States. Further, studies estimate that spending within the global information technology market will grow to $4.6 trillion in 2023, as industries such as data security, cloud computing, and artificial intelligence continue to innovate and expand at alarming rates. Needless to say, software is a crucial and ever-expanding industry for the global economy. In a series of recent cases, however, the Supreme Court injected unpredictability into the patent- ing of software and computer-implemented inventions by over- hauling the long-standing patentable subject matter doctrine.

Embodied in § 101 of the Patent Act, the “patentable subject matter” requirement for patent protection refers to the basic substantive categories of invention that Congress and the courts have considered to be appropriate for patenting. The Supreme Court’s recent jurisprudence has massively expanded subject matter eligibility restrictions under § 101, thereby making it more difficult to obtain patent protection for certain types of inventions—notably, software inventions. As software patents have become more difficult to obtain and even more difficult to protect, the current patentable subject matter jurisprudence disparately harms

small-scale inventors and startups who are reliant on the patent system to obtain crucial private capital from investors to support further innovation. Such issues are made glaringly apparent when comparing the domestic patentable subject matter jurisprudence to that of other technologically developed foreign nations, whose patent systems are more predictable and rewarding for software inventors.

The Supreme Court’s recent pivot has been met with substantial criticism by members of the intellectual property community across the political spectrum. Politicians, academics, district court and Federal Circuit judges, inventors, and former United States Patent and Trademark Office (USPTO) Directors have criticized the Supreme Court’s framework and have urged Congress to act. Sparked by a recent denial for rehearing en banc wherein the Federal Circuit was evenly divided on the contours of § 101, followed by the Supreme Court’s refusal to grant certiorari, senators and prominent law organizations pitched legislative proposals on the Senate floor to abrogate the Supreme Court’s framework and better protect emerging technologies, including software.

This Note pushes the need for legislative revision to counter- act the negative effects of the Supreme Court’s recent jurisprudence on the software industry and better align the United States with consistent global standards. Specifically, this Note thoroughly analyzes the history of the patentable subject matter doctrine, domestic proposals aimed at dismantling the current jurisprudence, and the way foreign patent systems handle patent eligibility restrictions for software inventions, to argue that domestic software innovation is disparately and negatively harmed by the Supreme Court’s evolving framework for evaluating subject matter eligibility. Software innovation is paramount to the development of modern society, and thus the patent system should stand to support the patentability of software inventions, rather than hinder it.