Alice Was No Rabbit Hole: Why Software Inventors Should Be Neither Surprised, Nor Alarmed

Abstract

Gottschalk, Diehr, Alice, and Tenon all held that computer programs that do not transform a business method or process are patent ineligible if the applicable method or process is not transformed into a new, inventive concept. Although patent protection provides a limited monopoly on the applicable invention, the business practices of NPEs and legislation purposed to mitigate the perils of practicing patents have created an ecosystem of uncertainty and risk that many are not willing or able to expose themselves to. Fortunately, patents are not the only game in town. Trade secrets offer an alternative to patent-ineligible innovations and to the problems and perils of protecting, defending and enforcing patents. Although there is currently limited trade secret legislation on the national level, nearly all states have adopted, with little substantive variation, the Uniform Trade Secrets Act. Unlike patent-eligibility requirements that precluded software in Gottschalk, Diehr, Alice, and Tenon from patent protection, no trade secret is automatically deemed out of scope. Trade secrets encompass anything of value, so long as it is not generally known and reasonable steps are taken, such as the use of employment agreements that include confidentiality and non-compete clauses, to preserve the secrecy of the invention. Moreover, there are active efforts to put into place a more robust federal system of trademark protection, including the Defend Trade Secrets Act and the Trade Secret Protection Act, which both seek to create benchmark standards for civil trade secret misappropriations in federal courts by amending the Economic Espionage Act.