Patenting Inventions Related to Non-Impact Printing in Light of the Recent U.S. Supreme Court Case: <italic>Alice Corp. v. CLS Bank</italic>

Abstract

Patent law is a vital aspect of research and development in all areas of technology. The field of non-impact printing is no exception. In 2014, the U.S. Supreme Court dramatically changed the landscape of what is considered patentable subject matter, with broad-ranging effect on technologies that rely on software and mathematical algorithms. The ruling, in a case titled Alice Corp. v. CLS Bank, prevents inventors from obtaining patents on what the court termed “abstract ideas” and went even further by stating that the use of a generic computer to implement an “abstract idea” is also not patentable [1]. While practitioners in high tech fields may not consider algorithms they create to be “abstract,” the Alice case and its interpretation by the U.S. Patent and Trademark Office (“PTO”) place potential roadblocks to patentability that require careful navigation based on the most recent case law decided in relevant lower federal courts across the country. For example, one court in New Hampshire rejected a CAD/CAM patent for mapping a ventilation system into digital form and processing the imported data into 3D drawings using standard parts. 1 The rationale was that this was an “abstract” process that could be performed manually and that the use of a computer did not make the process patentable. Across the country, a California court 2 upheld a Caltech patent on an error correction code algorithm. That court took issue with Alice in that it provided no clear dividing line between the patentable and the unpatentable: “Although software is patentable generally, neither Alice nor any other Supreme Court precedent defines when software is patentable . . . this has proved detrimental to the patent system.” Ultimately, the Cal Tech court found the error correction algorithm patentable because it “provided a specific computing solution for a computing problem.” The uncertainty that the Alice ruling has created for high-tech fields can be unnerving for engineering professionals who are trained to rely on physical rules that are unwavering regardless of the geographic state where they are applied. This paper aims to unravel some of the uncertainty by surveying relevant post-Alice court decisions and identifying common themes to help guide inventors whose products involve software-implemented algorithms. The paper concludes with a set of basic guidelines for patent claims in high tech fields based on the most recent law and on cases involving products related to non-impact printing.