In as little as six months, the US Supreme Court could provide clarity on the interpretation of Section 101, finally giving patent applicants in computer software certainty and predictability about whether their inventions are eligible to be patented.
Alternatively, the confusion could get much worse. That would be the result if the Court declines to hear the latest cases referred to it, or – having heard them – fails to provide a clear test for the lower courts to apply.
For that reason, Alice's widely expected decision to appeal the knife-edge judgment from the Federal Circuit is a gamble. The appeal court judges split equally in that case, and with six different opinions – one of them a cri de coeur from Chief Judge Rader.
Their opinions seemed to be almost begging the higher court to provide some answers. With Alice, and a similar case that has also been appealed, WildTangent v Ultramercial, the Supreme Court now has the opportunity to do so. And just to up the stakes Alice has hired Supreme Court big hitter Carter Phillips to represent it.
Practitioners tell us the outcome of software-related cases at the Federal Circuit today depends on the (randomly determined) composition of the three-judge panel, making it hard if not impossible to advise clients on their chances of success. The latest example of the division within the Court came just last week in Accenture. (Judges pictured, right.)
Of course, the Supreme Court has to take much of the responsibility for this mess. When it said, in Bilski, that the machine-or-transformation test was not the final word on patent eligibility, it left both patent attorneys and judges without a clear rule to apply. What is considered an abstract idea has become subjective. When I asked one practitioner how she advises clients in these circumstances, she replied: "We say we will find the case law that best supports the case, and tell them to keep their fingers crossed."
If it decides to take either or both of the Alice and WildTangent cases, is there any realistic hope for clearer guidance this time? Experience suggests not: the Supreme Court generalist judges don't like hard tests, they prefer flexibility and – judging by Bilski – some of them are pretty sceptical about the place of patents in this area at all.
Yet some practitioners believe things will be different this time. The clear message from the Federal Circuit and district courts; the emergence of two cases together; the provocative comments from the Federal Circuit; and above all the public and political debates about trolls and the role of patents in the economy: all may inspire the judges. "These circumstances should make the case more attractive to them," says Ching-Lee Fukuda of Ropes & Gray in New York. "A robust Section 101 test would help everyone."