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.
I am particularly interested in what happens in this area because I have my own patent application pending, United States Patent Application 20070055560, which relates to a method for assisting individuals create their own patent application while still obtaining professional assistance to make sure that the invention is described properly and errors are minimized. This is a process I invented to be used in conjunction with LegalZoom, and was successfully used for years until the Patent Office decided to change the rules of practice and made the LegalZoom process the unauthorized practice of law because inventors would first come into the process through LegalZoom. All that needed to change was the order of the LegalZoom process, but LegalZoom refused and simply decided to proceed in largely unaltered form and engage in the unauthorized practice of law. The Director of the Office of Enrollment and Discipline, Harry Moatz, decided he could not actually require individuals to be represented by patent attorneys and patent agents, so he feels that he is powerless to enforce Patent Office rules and regulations against anyone who is not a patent attorney or patent agent. Even more bizarre is that LegalZoom continues to engage in unauthorized practice of law with respect to trademarks . Crazy I know, but the USPTO position seems to be that the rules do not apply to LegalZoom.
Shortly after I ended my relationship with LegalZoom a number of competing services appeared, including Patent Express and now Rocket Lawyer. In each case, I was in contact with these companies, provided my patent application and offered to put together a service for them. They all choose to move forward and copy my process. I have notified LegalZoom, Rocket Lawyer and Patent Express that as soon as my patent issues I will be taking appropriate action to shut them down and recover reasonable royalty damages from the time my application published moving forward. While I have not heard back from Rocket Lawyer, who just started this process today, LegalZoom and Patent Express have both confirmed in writing they know about my patent, which is almost unbelievable they would do, particularly since Patent Express is run by a patent attorney. Thankfully, they have expressed full knowledge about my patent application and have told me that they think Bilski will make it impossible to obtain a patent. It is great news to see in my practice representing others just how easy it is to make successful Bilski arguments. I am looking forward to the day I can shut these folks down, but that is another story for another day.
What we are seeing in our practice is that patent examiners are looking at the language of Bilski and requiring only that a computer be included within the claim. We have seen this same Bilski rejection in a number of cases, and if you look at paragraph 7 and 8 of this redacted Office Action you will see that the patent examiners are focusing in on what Bilski ought to have been limited to, which is a purely mental process. The examiner explains that the process as defined could potentially be carried out in the mind of an individual, or with paper and pencil. The examiner then goes on to suggest that we explicitly claim the medium or structure within the claim to tie the claim to a computer or other tangible, identifiable apparatus so as to “recite the technological arts” required by Bilski.
Data Transformation Claim Strategies after Bilski
I think what we can safely say is that Bilski is not nearly the impediment to patentability that was feared. It almost seems that Bilski has provided a roadmap to allowance for examiners. So if you adequately describe a computer related process and define the process as a system, as good applications do, you should be good to go and anticipate an allowance. This taken together with the Patent Office new approach to encourage examiners to identify allowable matter early and issue patents should mean that real innovations will not be caught up in the Bilski net.
As for my invention, so many are always tempted to say that it is obvious and cannot be patented. If that is your belief you are entitled to that opinion, but it is not accurate. I have demonstrated my invention to many patent attorneys, patent agents and to retired patent examiners and former Patent Office Officials. To a person they cannot believe those without formal training can be coached into creating a meaningful patent application, but that is exactly what happens. In fact, my invention is unobvious by definition because people of skill in the art (i.e., patent attorneys) never think it will work, but become believers once they see it in action. So I have every confidence that a patent will issue as soon as the Patent Office gets around to taking it up for action. In the meantime, I am working on another application on the invention, and probably a continuation-in-part (CIP).
As it turns out, this system is also extremely useful for collecting information from clients. Clients who are not interested in doing the patent application themselves, because they realize that is a little like taking out your own appendix, can use the system to provide extraordinarily detailed information to their patent attorney or patent agent. There are already a few patent attorneys and patent agents who are using the invention with their own clients, and are having remarkable success. This makes the end product far more detailed, cuts down the amount of time it takes to create the patent application, makes attorneys and agents more efficient and can, if you chose, pass on savings to clients, thereby making it easier to compete on price without sacrificing quality.