Patenting the Social: Alice, Abstraction, & Functionalism in Software Patent Claims

Abstract

This article addresses a troublesome development in patent claiming practices for computer-implemented inventions: the staking out of broad, functionally-worded property boundaries around the social dimensions of human beings. The legal and sociological concerns that this development raises have not gone completely unnoticed in academia or in the judiciary, but the dominant focus on innovation policy in patent scholarship and jurisprudence has meant that such concerns have remained largely unaddressed. The troublesome development and attendant concerns may be seen most clearly in the case of social networking patents, a new category of patents classified separately by the United States Patent and Trademark Office (USPTO) since 2010.

Despite the Roberts Court’s active policing of patentability jurisprudence, the doctrinal guidance around patent eligibility – particularly the judicial exception prohibiting the granting of patents where patent claims are irremediably “abstract” – has been helplessly unclear, and largely orthogonal to the problem of functionalism in patent claim drafting. Functional claim drafting enables property claims articulated in patents to extend to the goals or outcomes of a particular technology, rather than to the technical means alone by which those outcomes are accomplished. Where the technology involves social relationships and social activities, as is the case with internet-based social networking, the outcomes being claimed involve the social dimensions of human beings.

In the last part of this article, I draw on theoretical developments within sociology to make two normative arguments. First, I argue that historical efforts in sociological theory to overcome functionalism may be helpful in providing a language to inform doctrinal articulations of the criteria for patent eligibility. Requiring patent applicants to articulate the efficient causal process by which their innovative technology accomplishes a novel and non-obvious outcome (and thereby solves a particular problem in the relevant art) will simultaneously address both the “abstraction” problem and the functionalism problem, and it will provide a language for addressing these problems that has so far been missing from the doctrinal development. Second, I make a vigorous legal, sociological, and moral case for the development of categorical prohibitions against patents directed to the social dimensions of human beings. I argue that the economic growth enabled by technological innovation is a significant social good, and one that we should take very seriously; however, it is a social good that must be balanced against other social goods – such as human freedom, dignity, and legal equality – to which we are also constitutionally committed.

Keywords: Intellectual Property, Patents, Social Networks, Sociology

JEL Classification: 034