BPAI Raises Stakes for In Re Bilksi and the Future of Software Patents

An excellent article by John Duffy, professor of law at George Washington University Law School, explains that two recent decisions from the USPTO's Board of Patent Appeals and Interferences (BPAI), Ex parte Langemyr (May 28, 2008) and Ex parte Wasynczuk (June 2, 2008) substantially raise the stakes for all interested parties in the Federal Circuit's en banc review of In re Bilski, a decision set to review the scope of patentable subject matter under 35 USC section 101.

I think this article, and others like it will lead the Federal Circuit to come to the right conclusion in the Bilski case, and that is patentable subject matter under 101 should not be restricted. Instead, the better way to curtail software patents lacking in any creativity or innovation is to reject them as obvious under 35 USC section 103. Prior art searching capabilities for software have improved and will continue to improve. Moreover, mandatory second reviews, peer review systems, and the like are proving effective at making sure that only the most innovative software patents are allowed to issue.

The effects of curtailing patentable subject matter to exclude software innovation and require physical transformations or a ties to a "particular computer" will be extremely damaging to existing businesses and the long-term impact in software innovation will be palpably negative: there will be little incentive to build a business around software innovation if the Federal Circuit curtails the scope of patentable subject matter under section 101.