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IBM Weighs in on CLS Bank: The Abstract Idea Test is Unworkable for Computer-Implemented Inventions and Should be Abandoned

IBM has filed a straight talking Amicus brief that says it like it is:  the Bilski abstract idea test unworkable and needs to be abandoned.  IBM argues that a computer implemented invention will always fall outside the abstract idea exception, no matter how simple and straight forward its implementation may be.  In addition, IBM points out that the abstract idea test has no logical limits and can be used to render patent ineligible any computer implemented invention, a result that would be unthinkable given the fundamental importance of software innovation to the American economy and the advancement of technology in general.  As a result, IBM argues the abstract idea test should be abandoned, and instead that Section 103 be used as the primary filter for determining the patentability of software inventions.

Here are some highlights from IBM’s brief:

“There should be no debate that computer- implemented inventions such as software are eligible for patent protection.  But, as the Federal Circuit’s deeply divided en banc opinion in this case abundantly demonstrates, the abstract idea exception has proven extremely difficult to apply to computer-implemented inventions and has created substantial uncertainty in an area where clear and administrable rules are imperative.”

“While it may be true that the steps required to implement an abstract idea on a computer are well established and thus likely within the capability of one skilled in the art, the implementation of that idea on a computer, however minimal the effort, definitively separates that specific technological implementation from the idea itself.   Technology has enabled an astounding diminishment of the man-machine interface, but it has not erased the need for that interface and, as a result, even the most problematic computer-implemented invention will  be meaningfully different from and narrower than the associated abstract idea.     Thus, computer- implemented inventions will always fall outside the abstract idea exception and are patent eligible under § 101.”

“But as IBM’s day-to-day real-world experience has repeatedly confirmed, a muscular application of the abstract idea doctrine is not a useful tool for addressing these problems in the computer- implemented invention context.”

“Based on its day-to-day real-world experience, IBM has concluded that the abstract idea doctrine’s failure is not due to the elusiveness of the proper test, but rather because the doctrine should not be applied to computer-implemented inventions.  IBM, like this Court, has grave concerns about non-innovative patents that crowd out true innovation by occupying entire fields of computer innovation without actually advancing the use of computers in practical terms. And IBM, like this Court, initially believed that a § 101 abstract idea test could be formulated to address concerns    about    preemption.        But    real-world experience has convinced IBM that while the abstract idea concept helps identify a serious problem, it does not  provide  a  workable  solution  to  the  problem.”

“In the absence of a doctrinal change in direction, the problems with the abstract idea doctrine will only get worse.”

“Worse still, the current skepticism regarding the patent eligibility of computer- implemented inventions—even highly innovative ones—suggests that each time a new technology reaches a certain threshold of ubiquity, the appropriateness  of  providing  patent  protection  for that technology will be called into question despite the fact that it is the protection the patent system provides that allowed the technology to advance to that point in the first place.”

“This Court’s abstract idea case law has identified a problematic class of patents, some of which involve computer-implemented inventions, that invoke concerns associated with § 101 and preemption. While further development of the abstract idea concept in this area is not the solution, § 101 itself provides the answer.  That section explains that in addition to being patent eligible, a claimed invention must also satisfy “the conditions and requirements of this title,”§ 101—“any claimed invention must be novel, § 102, nonobvious,   §   103,   and   fully   and   particularly described, § 112.”




Principal & Chief Innovation Officer

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