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Revisions are ongoing and should be finished by 21 November. Your comments or suggestions are welcome! | | | Section I: Bilski's Indirect Effect on Computer Software as Eligible Subject Matter | |
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< | 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. | >
> | 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 according to the Supreme Court's precedents (including categories of unpatentable subject matter, such as abstract ideas). For software, neither the Supreme Court nor the FedCir? addressed in the Bilski decisions whether mere recitation of a computer could satisfy the "special purpose machine" of the FedCir? 's machine or transformation test, or a computer specifically adapted to the claimed process was necessary. | | | | |
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< | 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. | >
> | 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 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 eligible subject matter for pure software, which explains why the doctrine remains unsettled. | | | | |
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< | 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. | >
> | In the upcoming years, I anticipate that the PTO and BPAI will continue to examine and adjudicate on various software patent applications, the number of which have not dropped. Although Jonathan Masur points to institutional incentives for the PTO to expand the boundaries eligible subject matter, I find recent developments from the Supreme Court through its many patent cases and Congress through the America Invents Act 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 by the PTO or from invalidity arguments raised during one of these patent wars cases. Bilski only started the debate, and without a definite solution, needless litigation and reexaminations will ensue. | | | Section II: KSR's Heightened Nonobviousness Test to Bar Trivial Software Patents |
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