Under U.S. patent law, patent-eligible subject matter includes “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”.
The U.S. Supreme Court has long held that abstract ideas and natural laws, by themselves, are not patent-eligible.
A test for patent eligibility
In its Alice Corp v. CLS Bank Int’l decision, the Supreme Court set out a test for determining whether the application of such abstract concepts is patent-eligible. If a patent claim or patent application involves an abstract idea, the second step under Alice is evaluating whether there is “an inventive concept” that makes such an idea eligible for patent protection. Well-known and conventional activities that have been routinely used in that field are not sufficient to show this requirement. The Alice decision made clear that merely using a computer to perform an ordinary business task that in the past was performed manually is not enough to obtain a patent.
Finjan behavior-based virus screening determined patent-eligible
Since the Supreme Court issued its Alice decision, many federal courts have invalidated software patents. However, in 2018 the Federal Circuit Court of Appeals upheld the patent-eligibility of virus-scanning software. In Finjan, Inc. v. Blue Coat Systems, the Circuit Court determined that, although virus-screening alone is considered an abstract idea, Finjan’s virus-screening software enables the detection of unknown threats, and is therefore patent-eligible. Here is why:
- Scanning files on a separate computer before they can reach the user and comparing known viruses to properties of downloaded files are considered conventional practices. However, the Court found that Finjan’s patent does much more. By identifying potentially hostile code using behavior-based scanning techniques, Finjan’s software represents a significant improvement upon traditional virus scans that simply detect known viruses.
- Instead of matching suspicious code to known viruses, the behavior-based technique allows the software to respond dynamically to emerging virus threats. Even when a user updates their virus software regularly, there is the possibility that a new virus can be deployed between updates. Finjan’s real-time threat detection has the potential to solve this issue.
Innovation is the goal
In practice, software patents must be significantly more than a patent on an abstract idea or concept. Longstanding business methods and practices are not patent-eligible simply because computer software is involved. For patent-eligibility, software must substantially improve the functionality of what already exists. After all, U.S. patent laws are rooted in the notion that commonplace ideas and methods should not become inaccessible. Rather, the availability of patent protection aims to encourage individuals and companies to be truly innovative.
Contact our California intellectual property attorneys
For more information or help with filing a software patent application, contact the experienced patent law attorneys at TIPS Group at 1-888-818-5481 to schedule a consultation.