I think this procedural aspect is critically important. Patent litigation is incredibly expensive. Defendants generally expect to spend >4 million dollars to defend against allegations of infringement. Post-Alice, judges have been ruling on the issues very early in litigation and cutting of those costs and timelines. As Theaeteus mentions, the problem with this approach is that it is generally done without full development of evidence. As a policy-matter, it remains unclear which approach is better (we don't know how good judges are at making the 101 determination (knowing it when they see it)).

http://www.supremecourt.gov/op...

This looks like it could turn-into the type of detailed discussion that we have on Patently-O.

My response is threefold: (1) this is a good question and any answer is difficult because of the complexity; 2) Yes, the test is not well defined and leaves lots of leeway for the lower courts and patent office to chose elements of implementation. However, (3) you can still go astray (at least in SCOTUS view) from an insufficiently defined rule. Software testers know this - beta software works in many situations, but there are always some bugs.

I think this raises a good point. I was in college back in the early 1990s when the Internet was really coming of age. Today, we are still using many of the fundamental internet parts that were created back then. Patents covering those innovations are now virtually all expired and free for all to use.

One caveat to the "if morse had won comment" is that our system allows for multiple overlapping patents. Thus, although Morse had the general concept of transmitting characters, another person could still patent a particular implementation that was inventively different that what Morse had accomplished. A third party wanting to use the new implementation might then need to get permission from both patent owners.

The basic decisions from the Supreme Court say: we think it is bad if patents cover fundamental building blocks of human ingenuity and innovation. The idea is that, rather than encouraging innovation (the purpose of patent law), such fundamental patents would discourage innovation by blocking progress by others. In order to implement this general theory, the court came up with a rule that you cannot patent an abstract idea, law of nature, or product of nature. We have recent cases on each of these: Alice Corp (abstract idea); Mayo v. Prometheus (law of nature); and Myriad Genetics (product of nature).

Now, software running on a computer would not itself be considered an abstract idea since it is working on a real machine and transforming physical space as it operates. However, in Alice (and prior cases), the court went on to say that the of an abstract idea or law of nature cannot be patented unless the non-excluded subject matter (i.e., the particular computer implementation) adds significantly and practical limitations to the invention or itself provides an "inventive concept." Merely taking an abstract idea and using known technology to implement it on a computer is not patent eligible.

The difficulties moving forward is that the Supreme Court did not provide any clear definition for what counts as an "abstract idea" or when the "something more" requirement has been satisfied.

Yes, it looks like a typo in the original post: The Supreme Court's Alice Corp. decision is *not* the death knell for patents generally.

I'm the author of Patently-O where I write primarily to an audience of patent attorneys and others working in the area on a daily basis.

My expectation is that Alice Corp will not be used to invalidate all software patents, but it will be the end of most business method patents. Moving forward patentable inventions will again need to be primarily based on technological advances rather than business benefit provided by the solution.

Over the past 160 years, the Supreme Court has decided dozens of cases involving subject matter eligibility. This goes back to a time before Samuel Morse tried to broadly patent the telegraph. (He wanted a patent that covered any and all methods of using an electromagnetic signal to transmit at a distance a signal representing characters). I see the Alice Corp decision as part of that unbroken chain of decisions going back generations. In Alice Corp, the Supreme Court added only incrementally to those cases. The importance of the case, however, comes from the fact that the lower courts (namely, the Federal Circuit) had deviated significantly from that line over the past few decades. I wrote about this here: http://patentlyo.com/patent/20...