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Abstract

The last five years have witnessed a dramatic shift in the approach taken by the Court of Appeals for the Federal Circuit ("CAFC") and, under the CAFC's stern if somewhat incomplete guidance, the United States Patent and Trademark Office ("PTO") to the seemingly intractable problem of determining whether software inventions qualify as patentable subject matter under the United States patent laws. Beginning with a series of CAFC decisions in 1994 and culminating with the PTO's issuance of its Final Examination Guidelines for Computer-Related Inventions (the "Guidelines") in 1996, the paradigm shifted from a "mathematical algorithm" based analytic structure to an apparatus model driven by the presence or absence of related computer hardware in the claims. Has this new approach finally brought the 30-year quest for a solution to a close? Certainly, abandoning the mathematical algorithm approach is a proper, and indeed vital, first step toward untangling the confusion surrounding the patentability of computer software. And from the applicant's and examiner's perspectives the new regime establishes a more well defined and objective set of requirements which when followed results in much greater certainty in the examination process. Unfortunately however, this promising alternative leaves the Gordian knot uncut. This article examines the current treatment of the increasingly important "article of manufacture" variant of the new hardware model and explains logical gaps that still remain. The results of this inquiry are used as the basis for a proposed new software as implementation versus software as language approach to resolving the software patentability conundrum.