Last week I was at the Patent Office interviewing a case along with Mark Malek, who was in town from Florida to talk firm business, look for office space and interview some patent agents regarding coming to work with us. The interviews lined up for this trip were all “Bilski-related,” in that the CAFC decision in In re Bilski was creating patentability issues. We learned that the sand is shifting with respect to the way the Patent Office is handling Bilski. What we learned is that things that we were doing in previous months are no longer acceptable. It seems that early last week a memo went out from the powers that be to the examiners handling Bilski-related applications, and in the memo it was explained that merely putting “computer implemented method” in the preamble of the claim is not something that will any longer work to overcome a patentable subject matter rejection under 35 U.S.C. 101. It seems that now you need to have “computer implemented method” in the preamble and there must also be positive recitation of “a computer” in the body of the claim. So the claims will now read something like “a computer implemented method… wherein the above steps are performed on a computer.” As Mark said, “talk about the Department of Redundancy Department!”
Mark Malek, Patent Attorney with Zies, Widerman & Malek
I spent the better part of last week in Washington, DC conducting Examiner interviews for some of my clients that have pending software patent applications. The great news is that I believe we now have a handle on the ever changing Bilski ruling. I know it sounds like a misstatement to say that the Bilski ruling is ever-changing, but apparently, the reality of the situation is that when the Federal Circuit provides a ruling, it comes with little or no guidance for the Examiners to properly examine applications based on the ruling. The guidance comes from internal memos to Examiners from the PTO indicating how applications should now be examined based on Bilski. The problem that Applicants run up against is that language that may have been allowable in light of Bilski under last week’s memo is not necessarily allowable under this week’s memo. The point of all of this is that I gained a lot of insight from interviewing two different Patent Examiners on the type of language that the PTO is looking for in software applications to place the claims within the requirements of Bilski.
Robert Plotkin, author of "The Genie in the Machine"
Critics of software patents often argue that software should not be patentable because software is too “abstract” to be patented. The patent system was created to protect nuts-and-bolts machines like the steam engine and the cotton gin, not “intangible” creations like software, so the argument goes. In this article I will argue that not only should software be patentable, but that inventions that are even more “abstract” should be patentable – inventions that I call “wishes” in my recent book, The Genie in the Machine: How Computer-Automated Inventing is Revolutionizing Law and Business.
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.
On Monday, June 1, 2009, the United States Supreme Court granted cert. in Bilski v. Doll. This means that the last chapter on business methods and software has not yet been written, which could be good news or bad news depending upon your particular take. I have wondered out loud about allowing software patents as patentable subject matter, which I think is the right thing to do myself. If these patents are not allowable it should be as a result of lack of novely or because they embody obvious innovation. Regardless of what your take is on the debate, what is certain is that the same Supreme Court that managed to get KSR v. Teleflex horribly wrong will now also dip its toe into the business method and software debate. Lets hope they understand the issues in Bilski better than they did when they through out the objective test for obviousness in favor of a “common sense” approach that gets implemented on a case by case basis without even the hint of objectivity.
Today I read on Patently O that the Board of Patent Appeals and Interfences is shutting down dissent in favor of efficiency. The source of the anonymous tip contacted me about two weeks ago with the same tip and I followed up and talked to many in the patent community and no one seemed to think that was what the Patent Office was doing at all. I then heard back from the anonymous source on May 16, 2009, inquiring why I had not run with the story and whether he should take this “smoking gun” elsewhere. I expressed my concerns that the literal meaning of the memo does not suggest that the BPAI is putting a muzzle on dissents or concurrences, or even mandating that the Board simply affirm patent examiners. I did point out that if this is the perception on the Board that perception would be important because as we all know, perception becomes reality. It would seem that the decision was made by this anonymous source to go elsewhere in hopes of outing the Patent Office.
On October 30, 2008, the United States Court of Appeals for the Federal Circuit issued its much anticipated decision in In re Bilski. The question that was presented by this case was whether a purely mental process is patentable subject matter. The Federal Circuit, however, took it upon themselves to call into question whether software patents are patentable subject matter. We had been expecting a far reaching decision that dealt a blow to business method patents, but few would have predicted just how far reaching the decision would be and that it would call into question thousands of software patents granted over the last 10 to 15 years. Ever since this decision was rendered there has been rampant speculation as to what Bilski means and how it will be interpreted. As one who works in this area and one with my own patent application pending in class 705, I was greatly interested both professionally and personally. Thankfully, I can report that it does not seem as if Bilski is turning out to be the impediment to patentability that many feared. In fact, based on what is going on at the USPTO one could make a convincing argument that it is actually getting easier to obtain patents that related to software and computer related processes. This is good news indeed.
It has already come to light that President Obama is interested in moving the United States federal government away from proprietary software to open source solutions. I am not sure this ought to a top priority that is so important that it is on his mind during his first 48 hours in Office, but it is apparently ahead of a lot of things. Personally, I would rather him try and use his vast fund raising abilities to raise the $1 trillion necessary to bailout the economy, but what do I know? I am just a patent attorney who thinks software ought to be patentable and that the Federal Circuit went way farther than it should have in Bilski. But I can’t help but notice that by making open source software a priority President Obama is potentially showing his hand and throwing in with those who would rather not see a strong and vibrant patent system. Perhaps I am reading to much into this and far to anxious about who he might appoint to be the next Director of the USPTO. Call me a worry wart if you will, but I don’t like where this might head. It is bad news for the software industry as we know it, and if he has these opinions on software what will his opinions on pharmaceuticals be?
I don’t usually get all caught up into writing about pending patent applications that have published, because we all know that there are just crazy patent applications that are filed and published that will never see the light of day. My personal all-time favorite is the walking through walls training system, which relates to a training system that enables a human being to acquire sufficient hyperspace energy in order to pull the body out of dimension so that the person can walk through solid objects such as wooden doors. But the published application I write about today is one that is a bit scary for reasons that go far beyond the patent world. In an application published on Christmas 2008, Microsoft is trying to patent a metered pay-as-you-go computing experience, which would give Microsoft exclusive rights to giving away computers for free, or virtually for free, and then charging a user fee for every hour the computer is used. What makes this application scary is not just the fact that Microsoft filed it, but that Microsoft has such a dominant position in the market that this could realistically become the future standard.
On October 30, 2008, the United States Court of Appeals for the Federal Circuit issued its decision in In re Bilski, which dealt a serious blow to software patents and largely did away with business method patentsaltogether, although there is still some room to receive a patent if the business process employs the use of a new, nonobvious and tangible computer system, but the protection would have to focused on the tangible computer system that employs an overarching architecture and not the process. I have written much about the decision of the Federal Circuit, and its wisdom, or lack thereof. For about a month I have owed Groklaw a response to some thoughtful comments regarding my opinions and beliefs, so without further ado I will try and explain my thoughts and what I would like to see moving forward. This will require a series of posts, so this post will act as Part 1.
As many of you undoubtedly already know, the United States Court of Appeals for the Federal Circuit decided two weeks ago that software should be patentable if and only if it is tied to a machine. The case, In re Bilski, asked the Federal Circuit to determine if a purely mental business method was patentable, but the Court decided to write a decision that brought into question the future of software patents. There is no justification for the Federal Circuit doing this, and in fact most of the Court’s opinion is not actually the law moving forward because all the did was pontificate about a matter not necessary to reach a resolution, so if district court judges do what they are supposed to do legally they will simply ignore the Federal Circuit’s determination that software can only be patented if it is tied to a machine. Hopefully that is exactly what will happen, but I have my doubts.
Earlier today the United States Court of Appeals for the Federal Circuit issued its much anticipated decision in In re Bilski. The question that was presented by this case was whether a purely mental process is patentable subject matter. The Federal Circuit, however, decided to write about something much more interesting to them, namely whether software patents are patentable subject matter. We had been expecting a far reaching decision that dealt a blow to business method patents, but few would have expected just how far reaching the decision would be and that it would call into question thousands of software patents granted over the last 10 to 15 years.
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more. The treatise is continuously updated to address relevant Federal Circuit and Supreme Court decision impacting patent drafting.
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