Questions about whether software qualifies for patent protection are becoming increasingly more prevalent, despite the fact the issue seemed settled. The Supreme Court has indicated its interest in the topic and the U.S. Patent and Trademark Office-which had previously been liberally issuing patents in the computer-related arts-now appears to be leading the groundswell against the subject-matter eligibility of these inventions, rejecting an increasing number of applications in this area for lack of statutory subject matter. Despite the broad definitions of patentable subject matter provided by the Constitution, Patent Act, and Supreme Court, the Patent Office has grafted various additional requirements onto the statute, the most recent being the requirement that the invention be within the "technological arts." In an effort to clarify the official Patent Office position, the Board of Patent Appeals and Inteiferences recently suppressed the notion of a separate "technological arts" inquiry. The Patent Office shortly thereafter issued interim guidelines for examination of patent applications for patentable subject matter, paying particular attention to computer-related inventions.
The statutory subject matter issue is not as complex as the Patent Office's activity suggests. Rather, in promulgating these guidelines, the Patent Office is trying to kill an ant with an elephant gun, overcomplicating what should be an essentially simple question. This Article shows that the Patent Office, the courts, and even some commentators, have used subject-matter rejections as a way to avoid tackling policy or practical issues that should be handled through other means; the rejections are merely proxies for inquiries that should more appropriately be made under other statutory patentability requirements. To prevent the Supreme Court t Assistant Professor, University of Richmond School of Law. I gratefully acknowledge the receipt from making the same mistake when it takes up the issue, the Patent Office must be disarmed by removing any software-specific inquiry from the determination of patentable subject matter.
Kristen Osenga, Ants, Elephant Guns, and Statutory Subject Matter, 39 Ariz. St. L.J. 1087 (2007)