Patent Office Releases New Temporary Post-Bilski Test For Software Patents

from the it's-something dept

While we're still waiting for the Supreme Court to rule on the Bilski case, which may or may not directly impact the question of software patents, JJ points out that the Patent Office has released some new rules on patentability, based on the appeals court ruling in Bilski (technically, the Patent Office issued a ruling, back in August, but just recently declared that ruling "precedential"). The full ruling can be found here (pdf). The key bit:
For a claimed machine (or article of manufacture) involving a mathematical algorithm,

1. Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., "not a mere field-of-use label having no significance")?
2. Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either "in all fields" of use of the algorithm or even in "only one field?"

If the machine (or article of manufacture) claim fails either prong of the two-part inquiry, then the claim is not directed to patent eligible subject matter.
As many are noting, this remains incredibly vague, though the Patent Office is limited by what the courts have said. One would hope that the Supreme Court's ruling in Bilski might lend some clarity, but the oral arguments suggested that the court might try to steer the decision away from anything having to do with software patents entirely. So, we may still have something of a mess for quite some time.


Reader Comments (rss)

(Flattened / Threaded)

  1.  
    identicon
    Michial Thompson, Dec 24th, 2009 @ 5:23am

    WTH????

    1. Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., "not a mere field-of-use label having no significance")?
    2. Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either "in all fields" of use of the algorithm or even in "only one field?"


    What does either of those statements even mean?

     

    reply to this | link to this | view in thread ]

  2.  
    icon
    Chargone (profile), Dec 24th, 2009 @ 7:09am

    Re: WTH????

    I'd argue that your question is the entire point in the system...

    not that that helps.

     

    reply to this | link to this | view in thread ]

  3.  
    identicon
    Anonymous Coward, Dec 24th, 2009 @ 7:12am

    Re: WTH????

    I think it's very complicated speak for "Stop giving patents to mathematical equations unless it's somehow entirely specific to what the rest of the program does" which is arguably impossible to prove so they should just say "Stop patenting MATH!"

     

    reply to this | link to this | view in thread ]

  4.  
    icon
    Steve R. (profile), Dec 24th, 2009 @ 10:19am

    A real product based on real components

    A poster here on TechDirt raised the concept of an oscillating lawn sprinkler. Basically, you should NOT be able to patent the concept of an oscillating lawn sprinkler. I would be willing to accept a patent on an oscillating lawn sprinkler that is an assemblage of clearly defined parts that can physically exist. (Obviously, I am not raising the "test" of non-obvious as a patent qualification.)

    Moreover, competitors should be able to reverse engineer any patented device. Under this scenario, patent infringement would only occur if the competitors actually use any of the physical parts depicted in the patent.

    Any "device" that consists of an ethereal assemblage of "cloud" boxes should NOT be patentable.

     

    reply to this | link to this | view in thread ]

  5.  
    icon
    Michael (profile), Dec 25th, 2009 @ 1:46am

    How do Patents benefit the commons?

    Few would argue that physical property rights are not a great first step to regulating scarce goods. However ideas are not something which are reduced when shared; in fact sharing ideas is how they are grown.

    As pointed out many times before, the reason copyrights and patents exist are actually to -promote- 'science and useful arts' by encouraging the spread of ideas that would otherwise not be spread.

    I argue that most ideas are solutions to problems, or obvious next steps to existing ideas, or the remaining combinations of existing ideas which have not yet been tried. That is should be obvious patents/copyright should not apply to those ideas; applying those tools does not lead to the stated result but demonstrably hinders the desired result.

    The desired result is to encourage non-obvious, new, and -useful- ideas to be shared so that the commons does not forget the result of that labor through various events to individuals or corporate entities.

    Over time I have seen wisdom in the application of two ideas that might be used to solve this issue.

    My own idea of limiting the number of patents granted in a period of time so that those which are granted can be researched more properly still applies; it would increase the transaction cost for those seeking a patent and thus ensure that applications are of substantial merit and quality.

    The other idea is a combination of 'cleanroom' development for compatible products (that is specifying an interface (facts) exactly and letting completely fresh developers determine how to produce it) to avoid copyright infringement with the fact that many times a solution's non-obviousness is -best- proven by multiple developers reaching it.


    Register patent contents in escrow with the patent office(s), any who -read- the patent must license it if they use the process described within. Any duplication of the effort by an outside party would be proof that the patent was erroneously granted to an obvious device/method. That should automatically invalidate future patent rights; though those who already licensed the patent would still be covered for a grace period (likely something set such as a quarter of the remainder of the patent period).

     

    reply to this | link to this | view in thread ]


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