UIC John Marshall Journal of Information Technology & Privacy Law


Unlike many foreign countries, the United States does not have an explicit rule that defines software as unpatentable subject matter. Despite the United States’ leadership position in patent protection, U.S. case law defining patentatble subject matter has evolved slowly and painfully. The legal controversy restricting software patentability stems from the principle that abstract ideas are not patentable. The Patent and Trademark Office remains uncomfortable in granting patents for inventions ideally embodied as software. Inventors’ attorneys continue to test these boundaries and the PTO continues to reject patent applications for software inventions based on the grounds that they constitute non-statutory subject matter. The PTO is denying patents because the Court of Appeals for the Federal Circuit has not articulated clear guidelines. The Federal Court compounded the problem with the case of In re Warmerdam, because the court did not apply appropriate precedent. Before Warmerdam, the patent bar gratefully received the Alappat opinion as a powerful argument to counter PTO rejections of software claims as nonstatutory or improper preemption of algorithms. As a result, the decision in Warmerdam leaves unclear to the PTO and the patent bar when a computer program should be patentable. This note uses a four part analysis to demonstrate that the court erred in denying Warmerdam’s invention because the Federal Court failed to consider the claims as a whole and failed to recognize the true nature of the process improvement invention. This note proposes a continuum of abstractness using inventions that have already been evaluated for patentability under 35 U.S.C. section 101 and determines the proper position of the Warmerdam invention in relation to other inventions in the continuum. It is determined that the Warmerdam invention should have been patentable because it is evident that prior cases have found more abstract inventions patentable.