Welcome to Patents4Software

Welcome to my new blog on software patents.  It has been a long time since I started in the patent profession – I got my USPTO registration number in 1982 – and since then the debate and confusion over software patent protection, or at least the boundaries of that protection, has continued on.  It’s been a meandering journey through the 70’s, 80’s, 90’s and 00’s, featuring several early and by some accounts inconsistent Supreme Court decisions — Benson (1972), Flook (1978) and Diehr (1981), the copyright vs. patent wars (80’s), the flip-flopping of USPTO policy from anti-software, to pro-software and a little bit back again, and the largely progressive Federal Circuit jurisprudence notwithstanding the arguably backtracking “machine or transformation” test.  And let’s not forget the endless never-say-die opposition to software patents by the League for Programming Freedom and its European counterparts.  Yes, it has been over fifty years of a zig-zagging, one-step-forward, two-steps backward but ultimately forward-moving path to establishing patent protection for software, and it’s not over yet!  Of course none of the League’s predictions that the software industry would be destroyed by patents have come true.  Far from being destroyed by patents the industry has flourished into one of the US’s most important and innovate industrial sectors.  And it’s still as innovative as ever as cloud computing and mobile applications and myriad other new developments place unfathomable computing power literally in the hands of billions of people throughout the world. 

 So let’s get back to the future – where do we find ourselves now in this long, arduous legal journey?  Well, of course we are on the brink of what will no doubt be another seminal pronouncement by the Supreme Court in the Bilski case.  This time it will be a pronouncement on the patentability of business methods, and the odds are against business methods.  Many believe, and I can’t say I feel strongly the other way, that patent protection was conceived to protect the technological arts, not the business or finance arts, and any such expansion of statutory subject matter should be fully debated in the halls of Congress before it is imposed on the entire machinery of American business.

While it is a little late to predict what the Supreme Court will hold in Bilski since the decision is only hours or days away, I want to go on record, in my first blog posting, with my prediction.  So here is what I think the Supreme Court will hold:

1. Congress intended that Title 35 protect the technological arts, not the business/financial arts, that the invention in question is not technological in nature, and are therefore non-statutory subject matter.
2. To determine whether an invention is technological in nature, one must look at the nature of the innovation, not the form of the claim, much the same way patent exhaustion under Quanta Computer focuses on the “essential features” or “material parts” of a claimed invention to determine if the sale of an item exhausts the claims at issue.  As such, if the novelty of the invention lies not in its technological character, but rather its business/financial nature, then the invention is non-statutory even if claimed in terms of a computer system or computer process.  Accordingly, one cannot dress up a wolf in sheep’s clothing and side-step the ban on business method patents.
3. On the other hand, technological innovations used to support business methods will remain patentable, so long as the nature of the innovation is technological.
4. What exactly is “technological” and what is not will be defined in some manner but the exact contours of this definition will remain to be decided in future cases.
5. Finally, the Federal Circuit’s “machine or transformation test” must include a technological arts requirement, and even then it not the only way to differentiate statutory from nonstatutory subject matter.

To find that methods of doing business are not patentable, the Court may in addition or the alternative invoke the well established prohibition on the patenting of abstract ideas or mental steps.  I hope, however, that it base its decision on these principles for at least two reasons.  First, a computer-implemented business process is no more abstract than many other technological software or data processing innovations that do merit patent protection.  For example, many data processing innovations meriting patent protection involve improvements in organizing, storing or processing various types of information that can all be said to involve some degree of abstraction at least in the sense that the data itself only describes or models a thing or concept that exists in the “real world.”  Secondly, for similar reasons I think the “mental step” analysis is also unproductive, since a computer can perform logic that is often identical to the mental steps that humans use to solve problems.  So to say that a computer software invention is nonstatutory because it replicates mental steps can, if taken to its logical conclusion, requires the outcome that many if not most computer software inventions are non-statutory.  Certainly, if one were to invent a computer system that could perfectly replicate the thought processes of a human it would be a phenomenal technological achievement, not nonstatutory subject matter!   So, the mental steps doctrine is problematic at best when used as a test for statutory subject matter in the realm of computer-implemented inventions.

 So, the next time you will hear from me is when Bilski is handed down, and that may be later today.

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