The full U.S. Court of Appeals for the Federal Circuit has agreed to take on the topic of patent eligibility for computer-implemented inventions. On October 9, 2012, the Federal Circuit vacated its previous split-panel decision in CLS Bank International v. Alice Corporation and agreed to rehear the case en banc. The two specific questions presented by the court in the order are:

  1. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?
  2. In assessing patent eligibility under 35 U.S.C. §101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?

This comes as good news to a software industry dealing with uncertainty arising out of the Supreme Court’s recent Bilski and Mayo decisions. Those decisions created ambiguity concerning how to draft patent claims to protect software-related technology and whether many existing software patents are valid. For example, recent Federal Circuit panel opinions have explained that a computer-implemented invention is patent-eligible if the computer imposes “meaningful” limits on the claim’s scope and plays a “significant” part in the claimed invention’s operation—not exactly crystal-clear guidance.

We will be keeping a close eye on this case. The oral argument is expected sometime in the spring, with a final written opinion coming three to six months later. Let’s hope the Federal Circuit can bring much needed clarification to this important topic.