Why Bilski Re-Affirms the Patent-Eligibility of Software
|Written by Robert Plotkin, Esq.
Robert Plotkin, P.C.
Author of The Genie in the Machine
Posted: August 5, 2010 @ 12:33 pm
Although much remains unclear after the U.S. Supreme Court’s decision in Bilski v. Kappos, one thing is certain: software remains patent-eligible in the U.S. This result may not be entirely clear from a quick read of the opinions in the case. Therefore, I present the following pieces of evidence that the Supreme Court in Bilski effectively re-affirmed the patent-eligibility of software (listed, for the sake of simplicity, in the order in which they appear in the decision).
1. The Court, citing Chakrabarty, re-affirmed that Congress “plainly contemplated that the patent laws would be given wide scope” when choosing the categories of “process, machine, manufacture, or composition of matter” to define patent-eligible subject matter in Section 101 of the Patent Act. Computer software performs processes, and computers that have been programmed with software are machines. A large body of precedent confirms that such processes and machines fall within the scope of the terms “process” and “machine” under Section 101. Therefore, the Court’s decision to confirm that Section 101 should “be given wide scope” supports the conclusion that software remains patent-eligible.
2. The Court, again citing Chakrabarty, re-affirmed that the three exceptions to patent-eligible subject matter are “laws of nature, physical phenomena, and abstract ideas.” Neither a programmed computer nor the processes performed by a program computer falls into any of these three exceptions, as again confirmed by a large body of precedent. Therefore, the Court’s decision to reiterate these three exceptions supports the conclusion that software remains patent-eligible.
3. The Court rejected the Federal Circuit’s “machine or transformation” test as the sole test of patent-eligibility. In my view, software (properly described and claimed in a patent) would remain patent-eligible even if the “machine or transformation” test were the sole test of patent-eligibility. However, the Court’s conclusion that the “machine or transformation” test is not the sole test of patent-eligibility, and the implication that subject matter which does not satisfy the “machine or transformation” test could still qualify as patent-eligible subject matter, only further supports the conclusion that software remains patent-eligible.
4. The Court emphasized the need for patent-eligibility under Section 101 to take into account that “times change” and that “[t]echnology and other innovations progress in unexpected ways,” and that, as a result, the mere fact that “patents for inventions that did not satisfy the machine-or-transformation test were rarely granted in earlier eras, especially in the Industrial Age,” does not necessarily imply that such inventions should not be patent-eligible now. The majority cited two earlier Supreme Court decisions for the propositions that Section 101 is a “dynamic provision designed to encompass new and unforeseen inventions,” and that a categorical rule denying patent protection for “inventions in areas not contemplated by Congress… would frustrate the purposes of the patent law.” This view of Section 101 as a dynamic provision which needs to adapt flexibly to new technological developments strongly supports the conclusion that software remains patent-eligible.
5. he Court further noted that the “machine or transformation” test’s failure to make clear that software is patent-eligible provides a “reason to doubt whether the [machine or transformation] test should be the sole criterion for determining the patentability of inventions in the Information Age.” This logic implies that software remains patent-eligible.
6. The Court disclaimed any intent to “comment on the patentability of any particular invention,” and stated that it was not “holding that any of the above-mentioned technologies from the Information Age [such as software] should or should not receive patent protection.” Such a disclaimer, however, is not a holding that software is not patent-eligible. At most, it is evidence of an intent not to change the status quo with respect to the patent-eligibility of software, and the status quo is that software is patent-eligible. Therefore, although this disclaimer does not directly support the patent-eligibility of software, it does so indirectly.
7. The Court’s conclusion that the claims in Bilski’s patent application did not qualify as patent-eligible subject matter under Section 101 does not have any bearing on claims for software, assuming that such claims are written correctly (such as by specifying in a process claim that the process is executed by a computer) and supported by a well-written specification. Neither Bilski’s claims nor his specification made any mention of a computer or other machinery for implementing his invention. Therefore the rejection of his claims under the “abstract idea” exception has no bearing on the patent-eligibility of proper software claims.
8. Even Justice Stevens, who (along with three other Justices) would impose a categorical prohibition on business methods, seems solely concerned with excluding what he refers to as a general method of doing business. Although it is not entirely clear what he means by this term, his discussion and the objectionable examples he provides (such as a process for training a dog, a series of dance steps, a method of shooting a basketball, and Bilski’s abstract method of hedging risk) indicate that he is referring to business methods which are claimed abstractly and without any reference to any machinery. Understood in this way, none of Justice Stevens’ objections to general business methods are applicable to patent claims on software, assuming that such claims are written correctly and supported by a well-written specification.
9. Furthermore, even Justice Stevens (in footnote 40 of his concurrence) stated that he did not intend to address the patent-eligibility of the claims that the Federal Circuit upheld as patent-eligible in State Street Bank. The fact that Justice Stevens did not see the need to address “whether a piece of software could be patented,” even when the sole purpose of such software was to perform a business method, is further evidence that his objection was only to “general” methods of doing business, not claimed in connection with any machinery (such as the method claimed by Bilski), and not to methods performed by software.
The laundry list provided above is not intended to be exhaustive or a conclusive proof that no statement in any of the opinions in Bilski could be interpreted to call into question the patent-eligibility of software in some way. Furthermore, this list does not attempt to sort through the different views expressed by the Justices in their three opinions, primarily because the differences between those opinions relate primarily to the patent-eligibility of business methods, not software. Rather, the purpose of this list is to provide a representative, but accurate, sampling of the Justices’ reasoning, which, when taken as a whole, overwhelmingly supports the conclusion that software remains patent-eligible subject matter in the U.S.
Even a very conservative reading of the opinions indicates that the Justices intended to leave the status of software as patent-eligible subject matter unchanged, and for further refinements to be worked out by the lower courts and USPTO. A more liberal reading indicates an intent to enable the scope of patent-eligible subject matter to expand in light of technological developments. In either case, the decision in Bilski fails to provide patent examiners and defendants in patent cases with any substantial new ammunition for rendering software patent claims unpatentable or invalid for lack of patentable subject matter, and weakens the ammunition previously in their arsenals. Therefore, despite any ambiguities which may exist in the language of the decision, the practical effect of Bilski will almost certainly be to bolster the patent-eligibility of software both in patent prosecution and in litigation in the U.S.
About the Author
Robert Plotkin, Esq. is a patent attorney specializing in patent protection for computer technology and the founder of the law firm of Robert Plotkin, P.C.. He has obtained hundreds of patents on computer-related technology for clients in the U.S. and abroad, and frequently writes and speaks on the topic of software patents. He is the author of The Genie in the Machine: How Computer-Automated Inventing is Revolutionizing Law and Business,(Stanford University Press, 2009). He taught the “Software and the Law” course at the Boston University School of Law for six years and has been on the faculty at Massachusetts Continuing Legal Education (MCLE) and the Practising Law Institute. He will be speaking to an audience of Canadian patent practitioners about the Alice decision at the upcoming 88th Annual Meeting of the Intellectual Property Institute of Canada in Halifax, Nova Scotia.