History of Software Patents III: In re Alappat

By Gene Quinn
November 1, 2009

 

This article has been significantly updated. Please see:

Software Patent History III: The Federal Circuit Decides Arrhythmia Research and Alappat.

 

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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Discuss this

There are currently 13 Comments comments.

  1. step back November 2, 2009 6:23 am

    Gene,

    What is interesting about both the CAFC decisions and the Sct. decisions is that in all instances we have judges appointing themselves as experts on what mathematics is and on what natural phenomenon or abstract ideas are, and what reality and application of ideas are, without ever calling for testimony from expert witnesses in these fields. One would suppose that the Supremes have already patented reality for themselves and thus have exclusive say so on what it is or is not.

    Early on, in his book, Road to Reality, author Roger Penrose discusses the interrelations between mathematics as thus far fabricated by mankind and our current understanding of the Universe and why “reality” may or may not intersect with either of these.

    See:
    http://en.wikipedia.org/wiki/The_Road_to_Reality

    P.S. The scheduled oral arguments date, 11/9 will be 9/11 in reverse. But then again, it’s just numbers and those don’t matter.

  2. Pierre Bierre November 10, 2009 4:22 pm

    Can someone explain to me why the tests of “novelty” and “practical utility” are not sufficient as the line of demarcation against frivolous patent apps? Specifically, why should novel abstract mathematical inventions (reduced to practice) be walled off as unpatentable?

    Here’s the argument for their patentability: If novelty is truly being met, then the invention comes as a revelation to everyone but the inventor. Beforehand, there is no awareness of the invention, nor practical usage. Therefore, nobody can argue that “something they already have been enjoying” is taken away, or its use restricted by licensing, as a result of issuing a patent. If they can document prior usage, then they immediately have a defense against infringement. But, in the case of true novelty, they are finding out about the invention, and gaining a means of access to it EARLIER than would be the case without patentability.

    Mathematical and algorithmic (or business process) inventions are no more inherently difficult to adjudicate than organic chemistry or nano-optical inventions…all require specialized domain knowledge (and perhaps open-peer dissemination) to evaluate for novelty and practicality. The only drawback to “thoughtware” IP patents is that their potential numbers dwarf the number of physical process patents, because the latter are more bound by physics constraints.

    However, is there any moral or legal basis for walling off content just because a wall is needed to prevent the volume of patent applications from expanding uncontrollably? Wouldn’t it be truer to “promotion of the sciences and useful arts” to evolve the patent system to handle 10-100X higher volumes, instead of trying to arbitrarily wall off high-volume content areas as unpatentable?

  3. step back November 11, 2009 6:14 am

    Pierre,

    Yes, I’ll answer part of your question; and actually this goes to the heart of the oral arguments heard on Nov. 11, 2009 by the US Supreme Court.

    Historically, US patent and copyright laws have split with the former being structured to cover the “Useful Arts” and the latter being structured to cover the “Entertainment Arts and other non-useful arts”.

    I’ll give you an example of entertainment arts. A musician, who knows next to nothing about electronics and computers, records a new and nonobvious musical piece using a conventional CD or DVD disc burner. The CD or DVD he produces is a novel article of manufacture (the pits or phase changes on it are different from those of other such discs) and yet most of us will be in agreement that the musician should not get a patent for his acts because they are directed purely to the entertainment arts and not to the “useful arts”.

    So what are the “useful arts” and why is non-applied mathematics not included among them? As to the first part, that is the 64 million dollar question that the US Supreme Court was trying to come to grips with yesterday (Bilski versus Kappos).

    However, as to the second half of the question, it is current US law that merely thinking about a mathematical problem and its non-applied, abstract solution is no different than thinking about a cross word puzzle and what words might fit into the boxes or thinking about a chess position and what next move you should make. It is all very entertaining and some of it is indeed hard and brilliant work. However, a policy decision was made that patents should not provide property rights for activities that do not fall in the “useful arts or processes” category. US patent law section 35 USC 101 specifically says: “any new and useful process” (where “process” is defined in 100(b) to include “art”).

    I agree with you that mathematicians have been unfairly cut out from being compensated directly for the clever and often useful work product they produce. In fact, Bernard Bilski and his co-inventor bill themselves as a bunch of mathematicians. What they tried to get a patent for was for the applied version of a commodity hedging system they came up with. So far the US Patent Office and the courts have said no; which is why they were in front of the US Supreme Court yesterday.

    Hope this helps. 🙂