Washington International Law Journal


James S. Sfekas


In recent years, the United States has expanded the scope of subject matter that can be patented. The Court of Appeals for the Federal Circuit has evolved a standard that allows inventors to patent software as long as it produces a useful and tangible result. Japan has also expanded the scope of patentable subject matter, but in a more limited fashion. Under the Japanese standard, the Japan Patent Office will only grant a patent to software inventions that apply a law of nature. The U.S. standard is too generous in allowing patents on software and business methods. Business method patents, in particular, are problematic because they are not consistent with the goals of patents and because they stray from the focus on granting patents to technology. Software patents, however, should not be overly limited because software is an area of technology and because software patents provide value to innovative parts of the economy. The United States should change its standard for determining whether an invention claims patentable subject matter by incorporating the Japanese standard. Under this standard, software inventions that control an apparatus or that work based on physical properties are considered patentable subject matter. Software inventions that do not meet this requirement will only be considered patentable subject matter if they show information processing performed by software as it is implemented in hardware. This standard would put limits on business method patents, including requiring that they be technological, while not overly limiting useful software patents. In addition, incorporating the Japanese standard would help the cause of patent law harmonization. Patentability of software has been a stumbling block for negotiations to harmonize patent law world-wide, but unilateral action in this area would improve the chances of countries agreeing to substantive patent law harmonization.

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