After Alice: how do Finjan and Core Wireless change the patentability of software in the USA?

Abstract

Despite the lack of clarity arising from the US Supreme Court’s decision in Alice v CLS Bank,1 the Federal Circuit has begun to more clearly define the boundaries of patent eligibility for software. In particular, in early 2018, the Federal Circuit issued two decisions which build upon its 2016 ruling in Enfish LLC v Microsoft Corp,2 to more clearly permit the patenting of software which improves computer functionality. As a result of these decisions, software developers will be more likely to identify software as potentially patent-eligible, leading to increased attention to patent terms within software transactions, despite the traditional focus on copyright and trade secret protection. Although private contracts and industry customs do not have the force of judicial determinations, they are critical to the development of predictable outcomes in the area of intellectual property protection for software, given the uncertainty surrounding the eligibility of software for patent protection.