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< | Revisions are ongoing and should be finished by 19 November. Your comments or suggestions are welcome! | >
> | Revisions are ongoing and should be finished by 21 November. Your comments or suggestions are welcome! | | | | |
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< | Patentability of Software after Bilski, KSR, and the America Invents Act: Looking Back and Looking Forward | >
> | Patentability of Software after Bilski and KSR: Looking Back and Looking Forward | | | -- By ThomasHou - 19 Oct 2011
Section I: Bilski's Indirect Effect on Computer Software as Eligible Subject Matter | |
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< | For patent law aficionados who were expecting the Supreme Court to make a definite pronouncement on the patentability of process patents such as computer software, the Court's decision in Bilski v. Kappos was a letdown. The Court declined to "comment[] on the
patentability of any particular invention" and left to the Federal Circuit ("FedCir") to develop doctrine on the patentability of process patents according to the Supreme Court's precedents (including unpatentable subject matter, such as abstract ideas). For computer software, the Supreme Court and the FedCir? both failed to address whether a general purpose computer could satisfy the machine prong of the FedCir? 's machine or transformation test, or a machine specifically adapted to the claimed process was necessary. | >
> | For patent law and software aficionados who were expecting the Supreme Court to make a definite pronouncement on the patentability of process patents such as computer software, the Court's decision in Bilski v. Kappos was a letdown. The Court declined to "comment[] on the patentability of any particular invention" and left to the Federal Circuit ("FedCir") to develop doctrine on the patentability of process patents according to the Supreme Court's precedents (including unpatentable subject matter, such as abstract ideas). For computer software, neither the Supreme Court nor the FedCir? addressed whether recitation of a general computer could satisfy the "special purpose machine" of the FedCir? 's machine or transformation test, or a machine specifically adapted to the claimed process was necessary. | | | | |
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< | Since Bilski, the PTO and BPAI have in fact begun to deny a large number of software-only patent applicationS, albeit without establishing clear doctrine. A July 2011 study of post-Bilski BPAI and district court cases on patentability found that a majority of software patent applications were invalidated, mostly because they were deemed abstract ideas. It is yet unclear the PTO and the BPAI's position whether a general purpose or a specially adapted machine is required. Most notably, the FedCir? has not had an opportunity to rule on the limits of patentability for pure software, which explains why the doctrine remains unsettled in this area. Nonetheless, a clear trend is observable that the Supreme Court's Bilski decision had trickle down effects on how lower courts assess patentability of computer software claims. | >
> | Nonetheless, decisions from the PTO, BPAI, and district courts are suggesting a more exacting review of software patent applications. Since Bilski, the PTO and BPAI have begun to deny a large number of software-only patent applications, albeit without establishing clear doctrine. A July 2011 study of post-Bilski BPAI and district court cases on patentability found that a majority of software patent applications were invalidated, mostly because they were deemed abstract ideas. On that level, the lower courts and administrative bodies are heeding the Supreme Court's earlier precedents, especially _ Gottschalk v. Benson_, which held that patentable inventions cannot substantially preempt the use of an abstract idea. The PTO and BPAI have not definitely commented on the contours of the "special purpose machine" definition from In re Bilski. Most notably, the FedCir? has not had an opportunity to rule on the limits of patentability for pure software, which explains why the doctrine remains unsettled in this area. | | | | |
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< | Or, to put it another
way, that would be following the position of the Federal Circuit
itself, in the portion of its decision in Bilski to which the
Supreme Court's subsequent decision is not
incongenial. | >
> | In the upcoming years, I anticipate that the PTO and BPAI will continue to examine and adjudicate on various software patent applications, whose filings have not dropped. Although Jonathan Masur points to institutional incentives for the PTO to expand eligible subject matter, I find recent developments from the Supreme Court, FedCir? , and in fact Congress, tempering the PTO's ability. Ultimately, the FedCir? must rule on the patentability of software and define what constitutes "special purpose machine", either from patent applications denied from the PTO or invalidity arguments raised during one of these patent wars cases. Without settled doctrine from the FedCir? , much of the law will be in flux. | | | | |
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< | However, the PTO has endorsed the general purpose computer option and with few contrary indications from the Federal Circuit, meager disagreement exists about the subject matter eligibility of computer software, at least in the courts. | >
> | Section II: KSR's Heightened Nonobviousness Test to Bar Trivial Software Patents | | | | |
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< | I don't think that
summarizes the position of the PTO or the BPAI correctly at all. I
see lots of rejections that suggest a different reading of the
"machine or transformation test" and doubt about whether "the
Internet" is a machine either. So if your position here results from
your own assessment of evidence, it would be good to read more about
what you looked at and how you reached your
conclusion. | >
> | Even though Bilski and eligible subject matter are dominating headlines in the patent law world, they are not the sole area in flux. After all, patentability also requires utility, novelty, and nonobviousness, the latter of which has long been the gatekeeper for patentability and the hardest for patentees to satisfy. The Supreme Court's fairly recent decision in KSR Int'l Co. v. Teleflex Inc. is having a similar effect as Bilski on determining the nonobviousness of patents, including computer software. | | | | |
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< | Section II: The Continued Viability of Nonobviousness to Bar Trivial Computer Software Patents | >
> | Several aspects of KSR are similar to Bilski and point to similar trickle effects on lower courts and the PTO and BPAI. First, the Court emphasized that its precedents called for a flexible and functional approach and rejected the FedCir? 's rigid, narrow test for obviousness. Second, the Court advised courts to look broadly at various factors, such as "interrelated teachings of multiple patents; the effects of demands . . . in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art." Third, the Court recognized that market demand will often drive design trends, especially in the informational economy: "When there is a design need or market pressure to solve a problem . . . a person of ordinary skill has good reason to pursue known options within his or her technical grasp." This insight may be particularly pertinent to computer software. Finally, the Court reemphasized looking at its precedents on nonobviousness and by applying them to the facts of the case, instructed lower courts to do the same. | | | | |
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< | Before software patentees get too excited, they should remember the Supreme Court's counsel that eligible subject matter is a mere floor and claimed inventions must also be "novel, nonobvious, and fully and particularly described. These limitations serve a critical role . . . ." The nonobviousness requirement under Section 103 of the Patent Act has long been the gateway for patentability and the hardest for patentees to satisfy. The Supreme Court laid out the standard test in its Graham v. John Deere Co. decision. In the early case of Dann v. Johnston, the Court applied the Graham factors and held a computer software program to help bank customers invalid for obviousness. The Court's most recent case on nonobviousness is illustrative and useful for testing this requirement against claimed computer software.
In KSR Int'l Co. v. Teleflex Inc., the Supreme Court considered the nonobviousness of a patent for an adjustable electronic pedal with a fixed pivot point used for vehicle control. The Court emphasized that its precedent called for a flexible and functional approach and rejected the Federal Circuit's exclusive reliance on its teaching, suggestion or motivation test. For patents claiming combinations of prior art elements, courts should be cautious and look at "interrelated teachings of multiple patents; the effects of demands . . . in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art." The Court recognized that market demand will often drive design trends: "When there is a design need or market pressure to solve a problem . . . a person of ordinary skill has good reason to pursue known options within his or her technical grasp." The Court held the patent at issue obvious and cautioned courts not to stifle the progress of the useful arts by applying rigid and narrow tests for obviousness.
Through KSR, the Supreme Court maintained the traditional threshold Graham factors test for nonobviousness for the Federal Circuit to follow. Having a high threshold is important for assessing the patentability of software, for nonobviousness limits the granting of exclusive rights to software whose inventiveness is trivial and which would have been obvious to the ordinary-skilled software inventor (whose skill would be quite high today). The field of software is broad and its prior art reaches beyond computer programs to that of the electrical arts and other fields. In Muniauction, Inc. v. Thomson Corp., the Federal Circuit considered the nonobviousness of a software system for auctioning and bidding for municipal bonds using a web browser. Finding little difference between the systems in the prior art and the use of a web browser well-known, the Federal Circuit invalidated the patent. To encourage free software, the Federal Circuit and PTO should not relax the high threshold for nonobviousness. Furthermore, the Federal Circuit has traditionally relied on secondary considerations such as commercial success, long-felt but unsolved need, and failure of others when nonobviousness is at a balance. With software creation increasingly having a marginal cost of zero, the importance of those secondary considerations should be reconsidered. After all, their use is optional and depends on the context. The Federal Circuit should be wary of using secondary considerations to uphold the nonobviousness of software when the main Graham analysis is close.
You begin by talking about scope, or section 101 if you want to be statutory about it, and then move without any transition to obviousness under section 103. That these involve entirely different procedural environments for challengers passes without discussion, which it shouldn't.
Nothing here discusses the real importance of Bilski, which is not its effect on new patent applications, but the light it sheds on the validity vel non of tens of thousands of high-abstractness patents created in a more lenient period, when the state-granted monopoly was available to anyone corrupt enough to apply for it. Even after the Supreme Court dithered its way to the conclusion that there may be patents on software and business method claims that are valid even though there is no special-purpose machine or transformation of matter, the litigation prospects of patents that evidently don't contain any such graces, like the ones that are purely patents on mathematical operations, are lousy. Yet patents of that type are currently being brandished by all sorts of fools trying to extort all sorts of parties (including even some free software developers), and are being sold as weapons at pretty high prices. If you're really trying to figure out the significance of Bilski, that's where you'd want to look. | >
> | An empirical study has found the FedCir? has invalidated more patents for obviousness because of KSR. Having a high threshold is important for assessing the patentability of software, for nonobviousness limits the granting of exclusive rights to software whose inventiveness is trivial and which would have been obvious to the ordinary-skilled software inventor (whose skill would be quite high today). The field of software is broad and its prior art reaches beyond computer programs to that of the electrical arts and other fields. To encourage free software, the Federal Circuit and PTO should not relax the high threshold for nonobviousness. Furthermore, the Federal Circuit has traditionally relied on secondary considerations such as commercial success, long-felt but unsolved need, and failure of others when nonobviousness is at a balance. With software creation increasingly having a marginal cost of zero, the importance of those secondary considerations should be reconsidered. After all, their use is optional and depends on the context. The Federal Circuit should be wary of using secondary considerations to uphold the nonobviousness of software when the main Graham analysis is close. | | | But I still don't know, after two full readings of the essay, what
it is about. Case summaries don't teach me anything, and what | | | how to use the remainder of the essay to explicate it, respond to
its critics, and indicate its implications. | |
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Section III: How the America Invents Act Ducks the Questions Regarding Computer Software Patents | | |
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