Note: I have finished up my research and am starting to write my draft, which will be finished and ready for your edits before Thursday, October 27. Any suggestions or insights on what I should focus on or change are welcome.

Patentability of Software after Bilski: How the Federal Circuit Will and Should Develop Doctrine to Encourage Free Software

-- By ThomasHou - 19 Oct 2011

Section I: Although Bilski represents an opportunity to shape eligible subject matter doctrine, the Federal Circuit will be unlikely to limit it for computer software.

The Supreme Court's decision in Bilski v. Kappos (130 S.Ct. 3218) was anticipated to lay the groundwork for patentable subject matter, including patentability for computer software. However, it did little in changing substantive law and left much of the law to the Federal Circuit (the "FedCir") to develop, subject of course to the Supreme Court's precedent. So, in the field of computer software, where so many people have different views on its patentability, the FedCir? will again be the chief engine to define the scope of its patentability.

Subsection A: It is well-entrenched in Federal Circuit jurisprudence that computer software is eligible subject matter, which Bilski did not disturb.

Looking at the Federal Circuit's precedent, free software advocates should not be optimistic. Although computer software were hardly patented at all in the 1960s or 1970s, they became gradually well-accepted by the PTO and FedCir? . That trend started after the Supreme Court's decision in Diamond v. Diehr (450 U.S. 175), which impliedly granted the patentability of software. In the 1980s and especially the 1990s, software patent applications skyrocketed and the PTO mostly granted them. In In re Alappat (33 F.3d 1526), the FedCir? sitting en banc held explicitly that computer software were patentable subject matter and mathematical algorithms were not a judicial category of ineligible subject matter (which were limited to laws of nature, physical phenomena, and abstract ideas). The FedCir? 's latest en banc decision in In re Bilski that adopted the machine-or-transformation test summarized the decades-long precedent underlying process patents and did not throw the patentability of software into any doubt. In fact, software arguably could satisfy either prong of the machine or transformation test.

Subsection B: Bilski offers several guidelines for the Federal Circuit to limit computer software patents.

The Supreme Court's decision in Bilski v. Kappos held that the machine or transformation test of the FedCir? was an important clue for patentability of process claims, but not the exclusive test. Furthermore, business methods, which are similar to software, are not per se unpatentable. The Supreme Court remanded for the FedCir? to define the contours of patent law subject to its precedents, specifically its decisions in Gottschalk v. Benson (409 U.S. 63), Parker v. Flook (437 U.S. 584), and Diamond v. Diehr (450 U.S. 175). Those precedents, as well the FedCir? 's most recent decision on patentability of software, serve good clues on its jurisprudence going forward.

Subsub 1: The Supreme Court's early jurisprudence concerning abstract ideas and mental processes can be used to invalidate many potential computer software patents.

Subsub 2: The machine-or-transformation test for process patents can be stringently interpreted to require tying the software to a particular type of machine or transformation, rather than to computers in general.

Section II: Bilski does not foreclose the use of other substantive requirements for patentability, which should be raised high for computer software patents.

Subsection A: The nonobviousness requirement should be construed strictly, and include broad consideration of pertinent prior art and secondary factors.

This aspect is not often explored and I might just write on non-obviousness (partly to fit the 1000-word limit). What do you think?

Subsection B: Institutional changes for the Federal Circuit and PTO are necessary for others to challenge the novelty of computer software patents, especially using third-party introduced prior art.

Section III: What Free Software users should consider when confronted with a patent infringement claim

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