| |
| META TOPICPARENT | name="FirstPaper" |
|---|
|
|
>
> | Revisions are ongoing and should be finished by 19 November. Your comments or suggestions are welcome! |
| | |
|
<
< | Patentability of Software after Bilski: How the Federal Circuit Will and Should Refine Patentable Subject Matter and Nonobviousness Doctrine to Encourage Free Software |
>
> | Patentability of Software after Bilski, KSR, and the America Invents Act: Looking Back and Looking Forward |
| | -- By ThomasHou - 19 Oct 2011 |
|
<
< | Section I: Bilski's Minimal Effect on Computer Software as Eligible Subject Matter |
>
> | Section I: Bilski's Indirect Effect on Computer Software as Eligible Subject Matter |
| | |
|
<
< | The Supreme Court's decision in
Bilski v. Kappos was anticipated to remake the groundwork for patentable
subject matter, including that of computer software. The Court had to
decide whether a method of hedging risk in commodities trading
constituted a "process" under Section 101 of the Patent Act, which the
Federal Circuit answered no according to its machine-or-transformation
test. The Court affirmed but criticized the Federal Circuit for
relying exclusively on the machine-or-transformation test, and also
held that business methods were not per se unpatentable. The Court
relied on its earlier precedents on process patents to hold that the
claimed invention was an unpatentable abstract idea. For computer
software, the Supreme Court declined to "comment[] on the
patentability of any particular invention" and left to the Federal
Circuit to develop doctrine on the patentability of process patents.
Except for the section
title, one gains no idea from the introduction to your essay what the
idea of the essay is. That's a waste of one of the two most
important places in the essay. The first paragraphs are where you
catch the reader's attention and provide an idea that makes the
reader want to keep going. We need to know what you have to offer,
and if what you have is summaries of cases we've read, that won't
hold our attention worth a damn.
The Federal Circuit has recognized the patentability of computer software ever since its en banc decision in In Re Alappat.
"Ever since" calls for a
date. Making someone read the case to find out you're talking about
1994 is a bad idea.
Recent developments in its doctrine and that of the Supreme Court have hardly thrown that into doubt.
Really? That's why the
Supreme Court keep reserving the question in one decision after
another and the PTO has started denying large-numbers of
software-only applications? I'm not so sure. Maybe you should have
stated the ground for this conclusion.
In its most recent decision on this matter, Cybersource Corp. v. Retail Decisions, Inc.,
"Most recent" will
become wrong immediately. At least one important case has come down
since. If you really need to write about cases, which I'm not sure
you do because I still don't know what your idea in this essay is,
how about "In a recent decision, ..."
the Federal Circuit considered the patentability of a method for detecting credit card fraud by using information from Internet addresses and a computer readable medium containing instructions for executing that method. The Federal Circuit held the method was an unpatentable mental process that a human mind could perform and the usage of computers to gather the data did not save the claim from unpatentability. For the medium, the Federal Circuit emphasized that it must look at the underlying invention and recitation of a computer without the computer placing a significant limit on the scope of the claim does not save it from unpatentability.
Still no idea of yours,
just case summaries....
Going forward, the Federal Circuit will continue to uphold computer software as eligible subject matter under its machine-or-transformation test. Having taken a beating in Bilski and other recent Supreme Court decisions, the Federal Circuit will likely be flexible in its approach and look at the software claims holistically.
Meaning what? Is this your thesis: "The result of Bilski is holism?" If that's the thesis, you should design the word.
Most software are sufficiently tied to a machine to satisfy the machine-or-transformation test.
"Software" is singular.
Whether this sentence is true depends on whether the "special purpose
machine" of Bilski means "a general purpose machine with no special
purpose." In that case, your statement might be correct. But that
would be a peculiar interpretation, don't you think?
|
>
> | 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. |
| | |
|
<
< | Nonetheless, one aspect that the Bilski decisions did not clarify was whether a general purpose computer could satisfy the machine prong, or a computer specifically adapted to the claimed process is required. As Jonathan Masur points out, this question can important in limiting the grant of computer software patents. |
>
> | 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. |
| | Or, to put it another
way, that would be following the position of the Federal Circuit |
| | Supreme Court's subsequent decision is not
incongenial. |
|
<
< | To encourage more free software, the Federal Circuit should rule for the latter.
Nonsense. Free software has less at stake in the massive foolishness that is patenting of software than proprietary software has. Our production processes don't depend on revenue-bearing operations that can be held up for royalties, so we are in general not worth suing. Our processes are also inherently international and non-hierarchical, so we are resistant to the very limited forms of available injunction. Downstream from our producers there are commercial redistributors and large enterprise users who are subject to disruption, but that's true of the users whether they are using free or proprietary software, and the redistributors have interests aligned with but severable from our own.
Free software makers—and I on their behalf—were early and vigorous opponents of patenting software, because we are vigilant about freedom, but as the present patent wars are showing, we are hardly the primary victims of the system's madness.
|
| | 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.
I don't think that |
| | |
|
>
> | Section III: How the America Invents Act Ducks the Questions Regarding Computer Software Patents |
| |
You are entitled to restrict access to your paper if you want to. But we all derive immense benefit from reading one another's work, and I hope you won't feel the need unless the subject matter is personal and its disclosure would be harmful or undesirable.
To restrict access to your paper simply delete the "#" on the next line: |