In Re Bilski Decided
As many of you already know, the CAFC decided In Re Bilski this week. Some, including the PLI, claim that the decision spells the end of software patents. I completely disagree. In fact, the majority addressed the continued patentability of software specifically:
"although invited to do so by several amici, we [also] decline to adopt a broad exclusion over software or any other such category of subject matter beyond the exclusion of claims drawn to fundamental principles set forth by the Supreme Court."
The number of incorrect reports and predictions surrounding this decision is really quite remarkable. Bloomberg is reporting that "In today's ruling, the appeals court overturned a 1998 decision involving State Street Corp. that made clear that business methods are entitled to patent protection." Not so. I agree with Peter Zura, who states that "State Street remains good law ...." While it is true that Bilski curtailed the scope (and called into question the validity of) so called "pure business" method patents, the fundamental policy rationale of State Street remains good law (On this topic, the majority stated: "[i]n State Street, as is often forgotten, we addressed a claim drawn not to a process but to a machine.")
The Bilski decision dealt specifically with a method of hedging risks in commodities trading. Regarding these so-called "pure" business methods, the majority stated:
"[p]urported transformations or manipulations simply of public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances."
In order to be patentable after Bilski, the claimed method must meet the "machine or transformation" test. This test is not a physicality test – i.e., a claim can still be patentable even if it does not recite sufficient "physical steps." On the other hand, Bilski holds that "a claim that recites 'physical steps' but neither recites a particular machine or apparatus, nor transforms any article into a different state or thing, is not drawn to patent-eligible subject matter." Thus, a claimed process where every step may be performed mentally is unpatentable.
"Of course, a claimed process wherein all of the process steps may be performed entirely in the human mind is obviously not tied to any machine and does not transform any article into a different state or thing. As a result, it would not be patent-eligible under § 101."
Given the conventions of most "software" patent claims drafted within the last decade, including claims drawn to "computer readable medium," "computer systems," and other similar claims including claims to "computer networks," the vast majority of these patents remain unaffected by Bilksi ... for now. The Supreme Court has yet to weigh in on this issue.
"although invited to do so by several amici, we [also] decline to adopt a broad exclusion over software or any other such category of subject matter beyond the exclusion of claims drawn to fundamental principles set forth by the Supreme Court."
The number of incorrect reports and predictions surrounding this decision is really quite remarkable. Bloomberg is reporting that "In today's ruling, the appeals court overturned a 1998 decision involving State Street Corp. that made clear that business methods are entitled to patent protection." Not so. I agree with Peter Zura, who states that "State Street remains good law ...." While it is true that Bilski curtailed the scope (and called into question the validity of) so called "pure business" method patents, the fundamental policy rationale of State Street remains good law (On this topic, the majority stated: "[i]n State Street, as is often forgotten, we addressed a claim drawn not to a process but to a machine.")
The Bilski decision dealt specifically with a method of hedging risks in commodities trading. Regarding these so-called "pure" business methods, the majority stated:
"[p]urported transformations or manipulations simply of public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances."
In order to be patentable after Bilski, the claimed method must meet the "machine or transformation" test. This test is not a physicality test – i.e., a claim can still be patentable even if it does not recite sufficient "physical steps." On the other hand, Bilski holds that "a claim that recites 'physical steps' but neither recites a particular machine or apparatus, nor transforms any article into a different state or thing, is not drawn to patent-eligible subject matter." Thus, a claimed process where every step may be performed mentally is unpatentable.
"Of course, a claimed process wherein all of the process steps may be performed entirely in the human mind is obviously not tied to any machine and does not transform any article into a different state or thing. As a result, it would not be patent-eligible under § 101."
Given the conventions of most "software" patent claims drafted within the last decade, including claims drawn to "computer readable medium," "computer systems," and other similar claims including claims to "computer networks," the vast majority of these patents remain unaffected by Bilksi ... for now. The Supreme Court has yet to weigh in on this issue.
Labels: in re bilski, software patents
posted by Mark P. Walters @ 9:11 AM
2 Comments:
At January 4, 2009 at 10:02 PM ,
Tf said...
Mark says "Given the conventions of most "software" patent claims drafted within the last decade, including claims drawn to "computer readable medium,"... the vast majority of these patents remain unaffected by Bilksi ... for now. The Supreme Court has yet to weigh in on this issue."
Thanks for the analysis. In light of several BPAI decisions stating that general purpose computer does not satisfy machine test, but treating some software claims as product claims thus get around Bilski, I think you are right about that, if the claims are structured under product claim in MPEP 2106.01 . Do I understand your comment right? (i.e., you meant that the unaffected software patents are structured as product claim instead of process claims?) Thanks.
At January 27, 2009 at 5:01 PM ,
Mark P. Walters said...
It's my position (and I think this is held generally) that Bilksi's holding is limited to process claims. But, that does not mean that it is advisable to simply re-cast an unpatentable process claim in the guise of a "product" ... When it comes to software, one does well to consider the language in Bilksi, as it relates to process claims, to be persuasive authority on the issue of patentability of product claims. So one needs to look at resulting software "product" or "machine" claims to detmermine whether they claim something that transforms data or implements data for a useful tangible purpose.
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