The goal of the patent system, as set forth in the Constitution, is to promote the progress of the “useful arts,” which has always been understood to mean technological progress. Here at Google, we are proud of the many ground-breaking software inventions by our engineers that have allowed us to file a growing number of high-quality patents and establish a strong and valuable portfolio.

While Google and many other tech companies invest many billions of dollars in research and development (R&D) to make these inventions – and these patents – possible, not all software patents issued by the Patent and Trademark Office (PTO) are of high quality. A series of roundtables recently convened by the PTO in Alexandria, Va.; Stanford University; and other locations around the country explored one of the most important tools for improving the quality of software patents and ensuring that only worthy patents are approved.

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That tool arises from the unanimous 2014 Supreme Court decision in Alice Corp. v. CLS Bank International, which established that software patent claims that recite a financial arrangement or broadly describe a function performed “on a computer” or “on the internet” are not eligible to be patented. Before Alice, applicants were obtaining patents from the PTO that were not based on any technical contribution or innovation, often not even providing an explanation of how they expected to achieve a result beyond stating that it would be done “on a computer.” Case law and PTO practices had swung too far toward allowing these low-quality claims to remain unchallenged, and a course correction was needed.

Because of the Alice decision, courts and the PTO must consider whether a proposed patent is advancing computer technology, or simply reciting generic computer operations. Initially, the implications of this ruling had to be worked out by the lower courts, and many early criticisms of the Alice decision were based on this uncertainty. However, as the case law has evolved, it is important that policymakers, innovators and others within the patent community take a fresh look at the results and impact of this decision.

Importantly, it is clear two years later that Alice was not the death knell of all software patents or a blow to innovation in the software industry that some have claimed. Many important areas of software R&D such as computer security, video compression and cloud computing have remained largely untouched – and even flourished in recent years – because they are normally described and claimed as vital technological advances in computer technology. That has not changed because of Alice, and a mounting body of case law ensures it is not likely to do so in future.

What’s more, the type of patents that Alice invalidated had long been used to harm real innovators in the software industry who did the hard work of finding the technical solutions that are necessary to create valuable products. It was vitally important for the Supreme Court to clarify that they have no place in our patent system. Now, the PTO and courts are asking the right questions so that the system rewards concrete advancements in computer technology rather than a statement of vague results with little information on how the result is achieved.

This standard has impacted how we approach patent applications at Google. We have found that when we draft applications and claims to clearly explain how the invention provides a technical solution to a technical problem, we draft higher-quality applications that provide better information to the public and that have better success at the USPTO and in foreign patent offices. Like many companies, we are building a global portfolio, and we see it as a positive development that the question of software patent eligibility has coalesced over multiple jurisdictions around the question of whether a claim represents a technical contribution.

Courts, the PTO and policymakers all have critical roles to play in ensuring that this standard is protected and continues to shore up patent quality and guard innovation. As the case law applying Alice to software patents continues to develop in the courts, it is important that the PTO instruct examiners to apply the same standards to claims in patent applications. With those developments underway, Congress can rest assured that the PTO and courts are effectively building upon the Alice decision’s legacy regarding the patent-eligibility of software claims; at this time, any additional Congressional action in this area risks creating more uncertainty and disruption.

We commend the PTO for seeking to address the issue of patent quality and appreciate the care the patent office has taken in examining the path put forward by the Alice decision. After two years in which software’s contributions to technology have continued to be rewarded and acknowledged, the line between eligible and ineligible software patent claims grows increasingly clear and predictable. Now we must all ensure that this important decision – and the technological innovation it guards – remains protected for years to come.

Allen Lo is deputy general counsel for patents at Google Inc.


The views expressed by authors are their own and not the views of The Hill.