IEEE Power Electronics Magazine - September 2016 - 12

Patent Reviews

by Art MacCord

a successful software Patent

he patentability of software
has been debated for de cades. Efforts to patent
software began when it was first
developed in the 1950s for generalpurpose computers. Several decisions have held that patents cannot
be obtained for software that is
merely an effort to patent an
abstract idea. A couple of years ago,
the U.S. Supreme Court, in Alice Corporation v. CLS Bank International,
defined a two-step process for determining if a software claim is eligible
for patenting. The first step is to
determine whether the claim is
directed to a patent-ineligible concept, such as an abstract idea. Other
ineligible concepts are laws of
nature and natural phenomena, but
software's ineligibility usually arises
from a finding of abstractness, so
this will be our focus.
If it is found that a patent claim is
directed to an abstract idea, the second step is to determine whether the
elements of the claim, both individually and as an ordered combination,
transform the claim into a patent-eligible application. The U.S. Supreme
Court has clarified that performing an
abstract process on a general-purpose
computer does not make it patent eligible. Since Alice in 2014, many patents have been invalidated and patent
applications refused as falling short of

Digital Object Identifier 10.1109/MPEL.2016.2585471
Date of publication: 7 September 2016

IEEE PowEr ElEctronIcs MagazInE

this test. The U.S. Supreme Court has
with the Alice test for abstractness.
not established a definitive rule to
Contrary to conventional logical moddetermine what conels, the patented logistitutes an abstract
cal model included
idea. Instead, the U.S.
all data entries in a
Efforts to patent
Patent and Trade single table. Column
software began when
mark Office and the
definitions were insoftware for generallower courts comcluded in rows in the
purpose computers
pare claims at issue
same table with the
was first developed
to those al ready
colu m ns, mak ing
in the 1950s.
found to be directed
what the patent calls
to an abstract idea
a "self-referential"
in previous cases. Exproperty of the dataamples of inventions falling afoul of
base. The patent specification touted
this test include
the self-referential database as better
than other types of databases, such
■ computer performed "purely conas relational databases or object-oriventional" steps to carry out claims
ented models.
directed to the "abstract idea of
The U.S. Court of Appeals ob determining a price using organizaserved that software can make nontion and product group hierarchies"
abstract improvements to computer
■ claims attaching generic computer
t e c h nolo g y j u s t a s h a r d w a r e
components to perform "anonyimprovements can and found that
mous loan shopping"
this self-referential table was a non■ claims adding generic computer
abstract improvement. The Court
components to financial budgeting
found it relevant to ask whether the
■ claims implementing offer-based
claimed inventions are directed to an
price optimization using convenimprovement to computer functiontional computer activities
ality versus being directed to an
■ claims applying an exchange of
abstract idea as the first step of the
advertising for copyrighted content
Alice analysis. The Court pointed out
to the Internet
that much of the advancement made
■ claims adding generic computer
in computer technology comprised
functionality to the formation of
software improvements that, by their
guaranteed contractual relationships.
very nature, may not be defined by
In a recent decision, Enfish, LLC v.
particular physical features but rathMicrosoft Corporation, the U.S. Court
er by logical structures and processof Appeals for the Federal Circuit
es. The Court said that those need
found that claims to a logical model for
not be considered to be abstract.
a computer database did not conflict

z September 2016

Table of Contents for the Digital Edition of IEEE Power Electronics Magazine - September 2016