“Google it” has become a familiar refrain for any Millennial tasked with answering a question.  The technology giant has redefined the way we obtain and process information.  Not surprisingly, the company’s intellectual property portfolio is quite valuable.  Google is continuing to add to that portfolio, seeking a patent on a method for, among other things, facilitating contact between experts in a

particular field and information-seekers.  And while the idea embedded in this technology is surely nothing short of remarkable, the company might still face some hurdles at the Patent and Trademark Office. This post will take a look at some of those hurdles.

First, given the Court’s upcoming opinion in CLS Bank Int’l v. Alice Corp., which will attempt to clarify the nebulous doctrines surrounding patentable subject matter, the state of software patents is anything but certain.  As such, Google’s pending application will be subject to whatever new constrains the PTO
promulgates in light of CLS Bank.

Second, Google must show that it is attempting to patent more than an abstract idea, as laws of nature, natural phenomena, and abstract ideas are not patentable.  That is, it must show that its software does more than facilitate interactions between individuals through a computer, as connecting the world with experts is probably an abstract idea.  Moreover, implementing the idea through a computer does not automatically transform the abstract idea into a patentable invention.  If the abstract idea can only be incorporated through a computer, then a patent on the software is a de facto patent on the abstract idea itself.

Third, Google will have to show that its idea is novel. Novelty ensures that an invention has not already been patented or dedicated to the public. And given that brokering has been around for quite some time, Google will have a difficult time showing that its new software is not anticipated by any prior art.

Mark Foley

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