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How to Patent Software in a Post Bilski Era


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: June 29, 2009 @ 12:55 pm
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Those familiar with the ongoing debate regarding the patentability of software and business methods know, the United States Supreme Court has decided to take up In re Bilski during its next term, which will start in October 2009.  In the meantime, what exactly do you do if you want to patent software or computer related inventions?  My firm has developed a specialty in handling these types of inventions, and we had success pre-Bilski, and we are having success post-Bilski.  As it turns out it might not be as difficult to obtain a patent on software or a computer related invention as was previously feared by some, including myself, in the immediate aftermath of the Bilski decision rendered by the United States Court of Appeals for the Federal Circuit.  Nevertheless, there are many attorneys who are advising clients that software is no longer patentable at all.   Recently I obtained a client who had been told that he did not have anything that could be patented thanks to the Bilski decision.  After we (Mark Malek and myself) looked at the invention we came to the same conclusion.  There is no single invention here that can be patented, rather there are about 8 to 12 different inventions that can be patented, depending upon how the patent examiner wants to issue restrictions.  The omnibus patent application we will soon be filing covers a really exciting innovation, will be the foundation of what could be a rather large portfolio and should be extremely lucrative for the client.

While it is true that the Federal Circuit has largely made “software” unpatentable, they did not prevent the patenting of a computer that accomplishes a certain defined task.  Given that a computer is for all intents and purposes completely useless without software, you can still protect software in an indirect manner by protecting the computer itself, and by protecting a computer implemented process.  You see, processes have been patentable since 1790, and despite the misinformed protestations by computer scientists and mathematicians, you can protect software because the software provides the instructions for the computer to operate, can be defined as a process or method like any other patentable process or method.  Rather than describing the process as it would be done by a human actor, you simply define the process as it is done by a computer.  If you know what you are doing it really is not that hard, at least conceptually.  The inability to actually call the invention “software” does, however, mean that the disclosure needs to be much more verbose and perhaps even a bit circuitous.



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It is puzzling to me that patent attorneys have not been able to figure out how to get around Bilski.  While pure business methods are likely in trouble, processes have always been patentable and with the Patent Office merely requiring reference in the claims to some sort of computer implementation, if anything getting an examiner to recognize allowable matter seems to have become easier since the Federal Circuit’s Bilski decision.  Perhaps that is also due to PTO initiatives to start issuing patent applications and working with inventors and their representatives to find patentable subject matter if it exists, I am not sure.  Whatever the reason we are having success, and I know others are having success as well.  It is not rocket science, although it does admittedly require a certain mindset that many patent attorneys do not have.  The key is to think and write the specification as would a software engineer.  What is critical is understanding that getting software to work requires far more than math or binary code, despite what computer scientists and mathematicians like to believe.  There is a human element to writing software, software is not predictable and creating a working software application requires overcoming traditional engineering hurdles.  That is why software is inventive and why it does get protected and rightly deserves the protection it receives.

Many patent attorneys are just not capable of writing patent applications for software or computer related inventions, and I suspect that is why some are telling clients that Bilski presents roadblocks, when in fact Bilski and the PTO interpretation thereof provides a road-map.  This is not to cut down or criticize patent attorneys who do not operate in the software/computer space, but rather to point out that this is a peculiar specialty much in the same way chemical and biotech practice is a peculiar specialty.  I don’t know anyone who dabbles in biotech, and when it gets outside process chemistry (i.e., A + B, mix and apply) I don’t know many who dabble in chemical applications either.  Similarly, there is not much room for dabbling in software or computer related applications.  You either do it and understand it or you don’t and should stay away.  Of course, if you are a computer sophisticated patent attorney with some level of familiarity with electrical engineering or writing computer code, you could well take to this area like a duck to water.  Regardless, if you operate in this space or want to operate in this space and see Bilski as a roadblock you really should sign up for the PLI hour long presentation – Patent Subject Matter: Data Transformation Claim Strategies After Bilski, which will be live via teleconference tomorrow, June 30, 2009 at 1pm Eastern.

So how do you protect software not knowing what the Supreme Court will do?  I think the way you need to approach any software related patent application is by realizing first that there is a strong likelihood that the law will change at least once, perhaps two or three times, before the Patent Office ever gets around to reviewing a software related patent application on the merits.  With that in mind, it is prudent to have in the specification a generally defined process, a process that is tied to a computer, discussion of what the computer does and how it will accomplish the task and as much more detail as possible.  Essentially, what you want to do is have disclosure in the specification that would support claims appropriate under State Steet, under Bilski and under Diamond v. Diehr.  I personally cannot see the Supreme Court dialing back so far that software and computer related inventions are not patentable, but I could see them going back to a rule much closer to Diamond v. Diehr, which might mean that we have to start protecting software as a machine, which is intellectually dishonest and naive, but who cares as long as your client’s innovations are protected!

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Posted in: Bilski, Educational Information for Inventors, Gene Quinn, Inventors Information, IPWatchdog.com Articles, Patents, Software, Software Patent Basics, Technology & Innovation

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

10 comments
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  1. “which might mean that we have to start protecting software as a machine, which is intellectually dishonest and naive, but who cares as long as your client’s innovations are protected!”

    It’s scary that I couldn’t tell if this was a sarcastic joke or not.

  2. It’s equally scary that the statement CAN be taken as a joke or an earnest reply in response to what is happening to the Law as it falls to the agenda of the Office.

  3. My hope is the USSC will rule that software is off the patent table. Seems that little has been written about the loop-holes that are allowing software patents that offer nothing more in value then happy owners, sad.This problem can be over if software patents end; no software patents no loop-holes. Too simple ?, I agree, what continues to happen at the PTO is too simple as well, the passing of software patents through because a magic word or two is included in the claims, that ends as being patents that hold tricks, then value, sad.How would one feel if you, were to find out the doctor is, because of a few “tricks” ?. Oh silly me, thats not the same thing, however it is, the impact on people’s lives is great when that, that is not what we believe it is, is given some form of power. Having the courts as boxing rings with the winners that go the 15 rounds, is of no value and the cost to everyone in one form or another, is too too high.

  4. Adam-

    It is indeed scary that you cannot tell whether my comment is a joke or not.

    Attorneys are paid to do for others what they could do for themselves if they had the knowledge and sophistication. So if courts want to try and prevent this sort of thing they are welcome to, but they do need to realize that patent attorneys are perhaps the most creative types of attorneys and will simply figure out ways to get around whatever requirements are put into place. The only thing that would prevent the patenting of an invention that is software related is if the Supreme Court says no process patents period. If they don’t say that software will be continued to be patented, in intellectually dishonest ways that suggest the magic is in the hardware.

    -Gene

  5. Gene, I was really hoping you weren’t condoning dishonesty. In the future, I won’t mistake that kind of sincerity for a joke.

  6. I have been patenting software for 23 years and do not see Bilski really changing how I go about doing it. The problem with Bilski is that whoever wrote the application wrote the specification and claims as though the software was disembodied, i.e., not tied to any type of hardware or not resulting in a clear transformation of an input to an output. We went through the same issue with attempts to patent algorithms long ago and it was resolved in much the same way that the Fed. Cir. has ruled in Bilski. I can only imagine that Blski’s appeal to the S. Ct. has more to do with someone trying to cover themselves than it really represents a disagreement with the Fed. Cir. decision. If you don’t write the specification correctly in the first place, get a 101 rejection, and have a statutory bar with respect to fixing it with a CIP, then you eithr give up or appeal it as far as you can.

    Is the S. Ct. going to rule software is unpatentable? Not likely, they do not have a history of ruling in that fashion, i.e., “anything under the sun made by man” is patentable subject matter. What they are more likely to do is reitterate the rules that are to be applied to patenting software, much like what they did with respect to the obviousness standard in KSR.

    Will it change anything? Only if you didn’t know how to write a software patent in the first place. So, in that context, I agree with Gene completely. The problem with software patents is incompetent patent attorneys/agents. If you don’t know how to do something, you don’t do it (I don’t do life sciences and phara work because I am a BSEE and don’t know enough about those areas to be competent), but you don’t need to tell your clients that life sciences or drugs can’t be patented, you just refer them to someone who specializes in that type of work.

    Tim

  7. Wow. This is insightful.

    I’ve never actually read an article written by a software patent lawyer until now. It’s fascinating. I think the only thing I can do here is congratulate you, Mr. Quinn, on your strong stomach. You must need it in your line of work.

  8. My colleagues at Dolcera (http://www.dolcera.com) have reviewed over 2000 office actions, and created a database of over 100 Bilski-related USPTO office actions just in the software field. The results are summarized in the following slideset: http://www.dolcera.com/wiki/images/Dolcera.ppt

  9. Do you have examples of software type claims that you believe would survive Bilski scrutiny? If so, please post. Thanks

  10. Doug-

    I don’t have any samples I can provide at the moment because they are not issued, at least since the latest memo from PTO hierarchy. This is a moving target, and what was OK several months ago is now not OK. I can tell you this though. If you write claims that were allowable under State Street and include “a computer implemented method” in the preamble, and then “wherein the above steps are carried out on a computer” you should be fine. Of course, that is assuming all of the above steps are carried out on a computer. I can envision in the future need to define a specific purpose computer, but this has been working for us lately.

    I hope this helps.

    -Gene