Assessing Patent Value: Software Inventions

Ever since the U.S. Supreme Court announced its decision in Alice Corp. v. CLS Bank Int'l last year, the value of software inventions in the U.S. has been challenging to assess. In Alice, the Supreme Court established a two-part framework for determining patent eligibility that applies to all categories of invention, including software:

1. determine whether the claims at issue are directed to a law or nature, natural phenomenon, or an abstract idea; and
2. if so, determine whether the claimed elements sufficiently ensure that the patent in practice amounts to "significantly more" than a patent upon the ineligible concept itself.

The court went on to explain that this framework is intended primarily to address "preemption"—the notion that patenting concepts that are too fundamental may inhibit further innovation by preventing others from using them. In this article, Finnegan attorneys  Rajeev Gupta and  J. Preston Long look at factors affecting the value of