Journal of Intellectual Property Law


There is currently a gap in United States' patent law that is threatening American innovation. The lack of predictability of the patent eligibility of new computer software has left many to wonder what the future holds for the industry. This idea is illustrated by the Global Intellectual Property Center's most recent patent protection rankings where, for the first time, the Global Intellectual Property Center ranked the United States tenth in patent protection tied with Hungary. To put this in perspective, the Center ranked the United States as the best country for patents in 2016. The 2017 report cites "uncertainty" in the interpretation of "key decisions" as a cause for the drop in ranking. This interpretation issue often centers around the meaning of "abstract concept." Although the patent community has called on the Supreme Court to better define "abstract concept,' the Court has failed to provide any further guidance. This is not due to a lack of opportunity: the Court recently had the option to give further guidance in hearing Synopsys, Inc. v. Mentor Graphics Corp., but it chose to deny the petition for certiorari, to the detriment of certainty within the intellectual property community.

This note will seek to further define the concepts of abstraction and inventive concepts as they apply to computer software patents. It will begin with a discussion of the evolution of the patentability of processes and software in general. This discussion will include a history of the various abstraction tests by combining the history of statutory law, common law, and federal guidance. It will then provide a snapshot of the current state of affairs through a description of the current test established by the Supreme Court's holding in Alice Coo. v. CLS Bank International Next, it will provide a background of the facts and procedural posture of Synopsys, Inc. v. Mentor Graphics Corp. This note will then analyze the current available tests to determine if a process is abstract through applying them to the facts in Synopsys along with current accepted patents. It will conclude with a discussion of the need for a new test based on the software's ability to improve a process by making it less cumbersome.