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procedures that others would discover by inde- CONSTITUTIONAL AND LEGAL ARGUMENTS
pendent, creative application of general principles. The recurring legal objection against patent-
In Alice Corp v. CLS Bank International, the ing software that the courts routinely articulate is a
Supreme Court (3) made a clearer statement that concern that a patent, if granted, would pre-empt a
an abstract idea, even if implemented on a computer, mathematical fact or an abstract idea (it has been a
could not be patented. The decision does not men- widely-accepted legal doctrine that laws of nature,
tion either the words “software” or “algorithm” (4), physical phenomena, and abstract ideas are non-pat-
but the decision was “widely considered as a deci- entable), thus restricting others in their independent
sion of software patents for business methods” (5). searches for new inventions and discoveries. This
For example, a Federal Court from the Northern concern with potential pre-emption has been widely
District of California stated: reiterated by the opponents of software patents. What
By clarifying that the addition of a generic was conspicuously missing in arguments of this sort
computer was not enough for . . . patentabil- was a clear and commonly accepted definition of
ity, Alice has had a significant impact on software “mathematical” and “abstract.” In the struggle to sort
patents. In Alice ‘s wake, the Federal Circuit and this out, various tests were invented and applied. For
numerous district courts have wrestled with the instance, one posits whether “a set of numbers is
issue of whether various software patents disclose computed from a different set of numbers by merely
the “inventive concept” required for patentabil- performing a series of mathematical computations”;
ity. (9) if answered affirmatively, this would yield a conclu-
In addition to the judiciary, the legislative and sion that the algorithm in question is “mathematical”
and, hence, not patentable. In 1989, the Office of the
executive branches of the Federal Government have Solicitor of the USPTO released a legal analysis that
interested themselves in the question of what software, attempted to define a concept of “mathematical algo-
if any, merits patent protection. Within the executive rithm” in the context of patentability.
branch, activity has centered on the USPTO, which Aside from the fact that it is difficult to find in pat-
establishes and executes the procedures for obtain- ent law the specific objection against the patentability
ing patents (6). According to Orozco, “the (US)PTO of a mathematical algorithm, the above-mentioned
launched a Business Method Patent Initiative, which efforts of courts and lawyers to differentiate between
included industry outreach and quality programs,” the “mathematical” and “non-mathematical” algo-
and took other steps to investigate whether comput- rithms have been summarily criticized as inadequate
er-implemented business method patents encouraged or absurd, even by some opponents of software pat-
or curbed growth in innovation (7). enting. Courts did offer an opinion in this matter.
The legislature has both held hearings and passed According to an analysis by Associate Solicitor Lee
legislation that relates to this subject. Business method E. Barrett, an attorney in the Office of the Solicitor
patents have been the subject of many hearings, for of the USPTO:
example, a hearing in 2001 was dedicated to this
subject (8). According to Orozco, the “first instance The Supreme Court thus recognizes that mathe-
of legislation targeting business methods was The matical algorithms are the basic tools of scientific
American Inventors Protection Act of 1999. This and technological work, and should not be the
legislation modified the Patent Act to provide a first subject of exclusive rights, whereas technological
user defense against business methods” (7). application of scientific principles and mathe-
The recently passed overhaul (The America matical algorithms furthers the constitutional
Invents Act, H.R. 1249, signed into the law September purpose of promoting ‘the Progress of … Useful
16, 2011) of the patent law did not, however, directly arts’ (18). It is also recognized that mathemati-
address the patentability of software. cal algorithms may be the most precise way to
In this paper, we will review some arguments for describe the invention.
and against software patents.