Looks Like Bilski Decision Is Leading To Many Software Patent Claim Rejections

from the a-good-start dept

When the Bilski decision came out, we said that it would greatly limit software patents, but various patent system defenders (mostly lawyers) insisted that I was wrong and most software was still perfectly patentable. Basically, they said it just meant everyone had to write claims differently, and we’d have just as many software patents as before. Listening to them (there was a hilarious conference call of lawyers insisting this was nothing to worry about), it sounded like they were in serious denial, claiming the only patent this ruling would lead to being rejected was the Bilski patent — all others would be fine. Things aren’t actually turning out that way, however, with a much more aggressive rejection of software claims than those lawyers insisted would happen. This is a good sign… though now we get to wait to see if the Bilski ruling is appealed to the Supreme Court. Update: No waiting necessary… should have checked the wires before posting this, because, indeed, Bilski has been appealed. Will have more on this later…

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Comments on “Looks Like Bilski Decision Is Leading To Many Software Patent Claim Rejections”

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Andrew D. Todd (user link) says:

Some Reasonable Extensions of Bilski, for the Consideration of the Supreme Court.

Bilski has two “prongs.” One is the “general purpose computer” prong. The other is the “tied to process or transformation” prong. Both need a bit of strengthening.

In respect of the “general purpose computer” prong, it is reasonable to insist that even if the patent recites dedicated hardware for processing information, the patentee should have the burden of showing that his algorithm is “computationally infeasible” on a general purpose computer. A working definition might be a computational complexity of, say, ten to the hundredth power. In other words, a circuit built out of quantum qubit registers would be eligible for a patent, but an ordinary circuit which processed audio (say, 50 Khertz) or video (say 6 Mhertz) would not be. I don’t think there would be very many intermediate cases. Problems either “go to infinity” or they don’t, as the case may be.

I gather that a lot of the MPEG patents recite low-speed dedicated computing apparatus, which may have made economic sense twenty years ago, but which no longer makes sense.

In respect of the “tied to process or transformation” prong, the patent should either 1) recite novel and non-obvious “tied hardware,” or 2) some novel and non-obvious method of connecting the hardware to a computer, or 3) cause the hardware to act in some novel and non-obvious fashion for some purpose other than conveying information to a human user.

For example, if Lonnie E. Holder wants to build a computer-controlled tractor transmission which behaves in different ways according to how muddy the ground is, according to directions from a computer program, the third clause would put the system within the scope of patentability, subject to novelty and nonobviousness. However, it should not be possible to patent the idea of plugging a standard radio or tape recorder’s speaker output into a desktop computer’s stereo input or microphone ports, using a standard cable, and running some possibly novel software which does something with the resulting data.

Similarly, the USB specification (class library) for video covers all the usual controls of a VCR or video camera. One might, for example, write a program which tells a USB compatible VCR to advance one frame, records and stores the frame, and then directs the VCR to advance to the next frame. The VCR is synchronized to the computer in much the same way as a disk drive. Thus, data does not arrive until the computer is ready to handle it, and such software ceases to be “real time.” This sort of thing should not be patentable. “Freeze-Frame” buttons have been present on VCR’s for at least twenty years, being anticipated by similar buttons on moving film projectors.

saulgoode (profile) says:

Why do humans matter?

Andrew D. Todd,

I agree with most everything you stated, but I fail to see the reasoning behind the third condition.

I wouldn’t characterize software as ever conveying information to a user; software changes the state of hardware which may then be perceived by humans. You seem to be suggesting that a distinction be made between a human directly perceiving the hardware change and the hardware change being exploited without human involvement.

Human involvement is not a consideration when evaluating hardware patents; why should it be a consideration for software?

Andrew D. Todd (user link) says:

#9, saulgoode, Why do humans matter?

Well, my intent was to draw a line between user interfaces and bona fide embedded systems, to say that no matter what images you put up on the computer screen, that does not overcome the software-ness of the software. My basic standard of reference in thinking about patent language would be video file formats. My language is provisional, and I invite better phrasings.

Suppose you have a computer controlling a phased-array radio set. At one level, you have the controlling the actual array phasing, steering a radio beam around. You might be testing the thing by getting in your car and driving around to find out what the reception was like at different points. In electrical engineering, there is a distinction between “signal-type” people, or old-time radio engineers, who worry about that kind of stuff, and “computer-science-type” people. My concern is that someone who is doing pure applications software, say a database to keep track of telephone numbers, should not be able to recite some “magic words,” and call himself a radio engineer when he is nothing of the kind, and doesn’t know the first principles of electromagnetics. The idea is, insofar as possible, to keep the two spheres separate, and let them go their separate ways.

Lawrence D'Oliveiro says:

Re: angry dud

Why the f*** software folks should be treated differently ?

Precisely the point. Why should software be treated differently? Why should it be the only field of human endeavour which gets two kinds of legal “protection”—copyrights and patents?

Let it make do with one kind of protection, just like everything else. Don’t treat it differently.

angry dude says:

Re: Re: angry dud


you can copyright semiconductor chip desigh AND patent its functionality
You can copyright network design AND patent its functionality

For morions like you one more time: copyrigth is about expression and it does not protect functionality in any way
If you write your software just to stare at it on screen then you are OK with copytighg
If your software actyually does somthiong useful and novel then you need a patent
Now drop dead punk

Lawrence D'Oliveiro says:

Re: angry dud

oh well…. back to hacking Perl regular expressions…

Noam Chomsky was the first person in the world to think up the concept of regular grammars and regular expressions. Are you paying him patent royalties every time you write a regular expression? After all, he would never have invented the concept if he couldn’t patent it, right?

Gene Cavanaugh (profile) says:


It is easy to “peg” in one direction or the other – all X are slobs, all Y are wonderful people. Reagan taught us that this is a good thing – but it is not, the real world doesn’t work that way.
Patent attorneys, including me, who really believe in the US Constitution and its goals agree with Bilski, and hope it will be used to invalidate nearly all software patents. After all, if there is an invention there, it can be applied to the machine and its functions the software resides in. If it is simply using software to implement a non-invention, bad!!!

Lonnie E. Holder says:

Re: Bilski


I think part of the key to this lies with Leapfrog v. Fisher-Price, with Bilski thrown in. Spreadsheets have existed long before Lotus 1-2-3, Visicalc and Excel. Just because you converted a handwritten spreadsheet to an updated technology should not make the updating patentable. If that was the case, when we went from charcoal to pencils, then “spreadsheet formed by pencil” or “spreadsheet created by pen” would have been patentable. Nonsense. If I performed a process in my brain previously, merely putting that process on a computer is an efficiency statement, not a novelty statement.

Lonnie E. Holder says:

Re: Re: Re: Bilski

angry dude:

Visicalc may have been a “killer app,” but when you read the inspiration for the “killer app,” it was a professor making entries on a chalkboard. Ergo, the developers of Visicalc translated what was being done by a human into a newer technology. This scenario is exactly the Leapfrog v. Fisher-Price scenario. Ergo, YOU do not know what YOU are talking about, unless you wish to provide a rebuttal as to why Leapfrog v. Fisher-Price is inapplicable in this situation.

And you need not call me “Dude.” That is your name.

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