Current Dilemma and Future of Software Patenting

Author: Yahong Li

IIC – International Review of Intellectual Property and Competition Law

July 2019, published online

Abstract: The unprecedented division over patent eligibility based on the ‘‘abstract idea’’ construct among the courts and judges in the Alice v. CLS case, the post-Alice contradictory decisions and the trend of rejecting or invalidating software patents, as well as the uncertainty about the concept of ‘‘computer program as such’’ (or ‘‘per se’’) in Europe and China, present a chaotic reality and serious dilemma as to the future direction of the software patenting regime around the world. The recent revisions to patent examination guidelines by the patent offices in the US, Europe and China, particularly the ‘‘grouping’’ of ‘‘abstract ideas’’ by the USPTO, providing examples of a ‘‘further technical effect’’ by the EPO, and distinguishing a‘‘computer program per se’’ and ‘‘computer-implemented inventions’’ by the CNIPA, although helpful in patent examinations, cannot solve the root problem and fix the dilemma. A more general definition, or a ‘‘safe harbour’’, for the ‘‘abstract idea’’ or computer program ‘‘as such’’ is needed. In addition, to prevent patent troll sand promote true software innovation, the scope and length of software patent protection should be limited, e.g. allowing only the means of implementation but not the function to be patented; and granting 10 years of utility-model-type or sui generis protection. All the above proposed reforms should be undertaken at the international level, e.g. by adopting a Software Treaty under the auspices of the WIPO, because the software patent dilemma is a global one that deserves an international solution, especially in the age of the internet where most of the soft-ware patents cover borderless internet technologies.