CLE: How to Draft Software Claims under Bilski

In Bilski, the Federal Circuit laid down the law of subject matter eligibility under Section 101 of the Patent Act. To be patent eligible, a claimed process must either: (1) be tied to a particular machine or apparatus, or (2) transform a particular article into a different state or thing. In all likelihood, claim limitations focused at general machines such as a “computer” will not be considered tying to “particular machine.” Bilski did not, however, decide that question – Bilski’s claims were admittedly divorced from any particular machine. On the transformation side, the court provided the example from Abele where graphically displaying “X-ray attenuation data produced in a two dimensional field by a computed tomography scanner” was sufficient transformation. Bilski’s claims were essentially knocked-out on the new mental steps doctrine – a process where all the claimed steps “may be performed entirely in the human mind is obviously not tied to any machine and does not transform any article into a different state or thing.”

Two additional points: Although the Federal Circuits points to the machine-or-transformation test as the sole test for Section 101 patentability, the court approved two ‘corollaries.’  First, field-of-use limitations continue to be “generally insufficient to render an otherwise ineligible process claim patent-eligible.” Second, “insignificant postsolution activity will not transform an unpatentable principle into a patentable process.” (quoting Diehr).  Thus, merely reciting a specific machine or particular transformation will not bring a claim into the realm of patentable subject matter unless the recitation is more than mere insignificant postolution or extra-solution activity.

Going forward, I do not believe that these limitations will have a significant impact on a skilled practitioner’s ability to patent software innovations. However, I would like community input on how you might properly claim computer software in a way that avoids § 101 rejections?

72 thoughts on “CLE: How to Draft Software Claims under Bilski

  1. Michael,I totally agree with you. Bilski is consistant with Supreme Court and prior Fed Cir opinions. It seems to me that some pundants are trying to make a big deal out of a case that follows Fed Cir precedent.

    It is similar in this regard to the KSR case. The Fed Cir ignored the Graham test in its decision. So the conclusion reached by the Supreme Court is not a surprise.

    I think the speaking circuit is trying to make a big deal out of both of these cases.

  2. “‘Software patents’ are hobgoblins of uninformed application software developers.”

    “Hobgoblin” is an excellent term, Eye… although I’d choose “bogeyman” instead. It has more of that vaporous and silly quality that exemplifies the basis of the anti-software-patent mindset.

    Every time I encounter a “rah rah, down with software patents” Slashdot type (disclaimer: not all Slashdotters are like this; I post there regularly), I ask a pointed question: What evidence exists that software patents, in the decade since State Street, has deterred progress in software? I’ve yet to encounter a meaningful reply. Most just dismiss me as willfully ignorant of the “mountain of evidence” or whatever (of which even a single pebble has yet to be proffered.)

    I can then go on to explain that software patents don’t deter technology because no patentee *really* wants to deter technology. They’d rather license it, standardize it, etc. Competitors can then design a work-around, which is sometimes an even better technology, etc. … in the end, software patents facilitate technology transfer. Not one software company has ever been strangled by a competitor’s patents blocking the field.

    Sadly, the haters have usually stuck their fingers in their ears at this point, and prefer to continue ranting about the inequities of the system than to discuss the issue… very sad state of affairs among an ostensibly scientific community.

    - David Stein

  3. Mooney would tell her: “Word” How quaint, in a ghetto sense of course.

    “Software patents” are hobgoblins of uninformed application software developers. I don’t know any application programmer out there who has anything to be worried about.

    Mooney doesn’t know his ASCII from a hole in the ground.

  4. “The real question is: what do you tell your client when she calls you tomorrow and says, ‘Puketech.com is asserting their software patent against us. What should I tell them?’

    I know what I’d tell her.”

    Malcolm, you never cease to amaze. First we learn that you can render an invalidity opinion without reading the description or prosecution history. Today we learn that you can give advice to a client on how to respond to an infringement allegation without even reading the claims! I am impressed.

  5. The real question is: what do you tell your client when she calls you tomorrow and says, “Puketech.com is asserting their software patent against us. What should I tell them?”

    I know what I’d tell her.

  6. It seems that there have been few, if any, attempts to answer Dennis’s initial question: how do you now draft software claims after in re Bilski?

    Unfortunately, I do not share Dennis’s optimism that skillful drafting can overcome this opinion, at least with regard to software that doesn’t manipulate data that are representative of physical objects in the real world.

    Consider, for example, a new computer program for the automobile insurance industry, which makes a recommendation for what insurance premium to charge an applicant based upon a unique evaluation of previously existing data (such as the applicant’s accident history, costs of insuring similar drivers, etc.). The data manipulated are only loosely tied to the “real world”–information about the frequency and cost of prior accidents. The heart of the program is undeniably just a mathematical formula. And the output–a recommendation for a premium–hardly seems to be a transformation of an article. Yet the program, if it works properly (i.e. selects the optimum insurance rate for the applicant) would certainly be useful.

    I think that it would be fairly easy to draft claims that meet the old State Street test. But the Bilski test? I just don’t know.

  7. “There are far, far better ways to deal with that problem than opening the PTO’s doors to software patent hacks and trolls.

    What possible benefit to the public can there be to publishing novel crytographic methods in exchange for a monopoly on said methods? Makes. No. Sense. Whatsoever.”

    What possible benefit is there to this blog to allowing hacks and trolls like Mooney to post?

  8. Hi, again, ironic slip.

    “I can point to one measure of innovation that we know is not attributable to large companies and that is lagging stock prices coupled with miniscule pay-outs in patent cases … That tells me that like all status quo / historical norms the folks in power want to EXPENSE innovation not VALUE it …”

    Since I’ve got a bit of accounting background and am not above tweaking what you said for a laugh, one might draw an opposite conclusion from that bit of legislative history that Judge Newman quoted in Bilski:

    “As recently as 1978, intangible assets, such as intellectual property, accounted for 20 percent of corporate assets with the vast majority of value (80 percent) attributed to tangible assets such as facilities and equipment. By 1997, the trend reversed; 73 percent of corporate assets were intangible and only 27 percent were tangible.”

    Another bubble in the stock market waiting to be burst by an adverse SCOTUS ruling? :-) But I don’t think you intended “value” in the accounting “asset” sense. Sounds like we’re fairly close on the social utility of companies using the MAD threat of patent Armageddon defensively.

    On the decline of attribution to real innovation, isn’t that really built into the impossibility of adequately defining the size of the innovative leap necessary without categorically excluding unforeseen inventions?

    That and other definitional difficulties were major factors in the evolution of my bias against patents, particularly to the extent that they serve as impediments to ICT system interoperability.

    There are some very serious consequences to setting up toll booths at the connection points of a connected world. It increases the information advantages of the Haves and the disadvantages of the Have Nots, in a time when far too many in the world are starving, living in poverty, and dying for lack of medical treatment.

    On the antitrust front there is progress but too little. We have gone from Microsoft being allowed to impose RAND and royalties in U.S. v. Microsoft without showing an iota of evidence that it held any relevant and valid IP rights to Commission v. Microsoft where patents, copyrights, and trade secrecy were rejected as defenses, albeit Microsoft was allowed to charge relatively nominal fees after some post-judgment arm-twisting over the value of the IP rights involved when isolated from Windows itself.

    After eight years of picking on little guys, the Feds may become more of a factor if Obama wins tomorrow night. His technology platform plank emphasizes a revival of antitrust enforcement. But who knows when it comes to campaign pledges?

    Well, it grows late and I need to get my nose back to the grindstone tomorrow. I’ve enjoyed the discussion and thank all who’ve participated. Bilski is an interesting event.

  9. Why would you even want to ‘do evil’? Wouldn’t it be better to get rid off software patents aka useless slack for the tech markets.

  10. “My issue is that restricting patent protections under 101 because of what is “unknowable” causes such distortions as trade secret voting boxes”

    There are far, far better ways to deal with that problem than opening the PTO’s doors to software patent hacks and trolls.

    What possible benefit to the public can there be to publishing novel crytographic methods in exchange for a monopoly on said methods? Makes. No. Sense. Whatsoever.

  11. step back … as usual … well said …
    Eurodisnae – exactly -
    Max – glad to agree with you …
    David Stein … heap of praise …

    Paul E.:

    “Where we appear to differ fundamentally is in regard to whether software *should* be patentable. That topic goes to the socio-economic/legal side of the discussion, as opposed to the fact we agree on. I suspect we’ll be less successful in finding consensus there.”

    Maybe not but there is no “truth” in this context only progress and alleged promotion of useful arts that is equitable to both the innovator & the public … I am troubled by how “software”, “signal” & “business method” are defined – if at all – no one can tell me if RSA is all, some or none of the above terms … As for socio-economics, Bill Gates wrote an LTE to a magazine (1975) and said software should not be free – TJ said information wants to be free (1783?) – so where are we on that given that TJ was our first Patent “czar” & Bill is the richest guy around?

    “I co-authored some draft legislation a few years back during the software patent constitutional crisis in the E.U. that attempts to define that line. link to groklaw.net The language isn’t completely debugged and is somewhat bent to reflect the context of the E.C.’s Computer-Assisted Inventions Directive ultimately shot down in Parliament, but I think it does identify a bright line that can be drawn and produce a predictable result in most situations.”

    I am familiar with your work – and you probably know mine ;-) but given the nature of litigation these days we can leave it at that – I started my long road with copyright/WIPO 1995 White Paper/RSA PublicKey Partners/Napster/DMCA … all having some relevance to my docket -

    I believe the bright line is algorithmic information theory & that more examiners should read shannon – if we know optimal program size for any function with a randomness constant than most functions/software that has been patented will go to the public domain in short order & we will all know the optimal size given engineering (patentable or not) trade-offs on execution of those “applications” …

    My issue is that restricting patent protections under 101 because of what is “unknowable” causes such distortions as trade secret voting boxes & misapplication of crypto protocols which hurts all of us & the unknowing public at large … It punishes intellectually honesty … If we all assumed Kerckhoff’s Law (1883) in determining patentability under 102/103 & of course 112 – it would serve a very solid bright line & proper attribution to innovators would be more transparent.

    “On a more personal note, it was gratifying to read Judge Mayer calling beeswax on the Chakrabarty Court’s turning of the legislative history on its head in regard to “anything under the sun that is made by man.” That was a foul ball proclaimed as a home run that has bothered me for many years.”

    Be that as it may, Inventors invent – Judges judge … one PTO director said all that needed to be invented already had been invented in, what, 1900? so tit for tat … but attribution to real innovation is in serious decline, while responsibility and accountability over data is in serious question, and moves to european style industrial policy coupled with “national champions” is not a winning play book. Plenty of foul balls are mistakenly called home runs … then again one man can close the game – the quintessential American “past time” where each “club” member has a role – the pitcher controls the game – not the clock … It would be unwise to dismiss the role of inventors especially with little or no intellectual honesty about particular subject matter …

    “I think the arguments for overlap between patent and copyright law are particularly weak with software patents. The software industry flourished before software patents were common and virtually all economic studies have shown no net economic benefit from their existence other than in the legal profession. I see no compelling justification for patent incentives in this area.”

    Way too many network effects and monopsonist purchases of otherwise innovative firms – if you are right, why are they fighting the system while putting out contrary information in seeking to reform the Patent Act? Alas my background is finance though my applications are mostly in crypto/signal processing – it is quite alarming to me how much protection is heaped upon copyright & trademark, with little debate or job creation, while no balance appears to ever reach inventors … so my specific issue is with the language thrown around in these cases as though someone filtered the amicus briefs and then decided what seemed to fit the moment all the while pretending that any of the software firms involved actually can show any real innovation besides “defensive patents”.

    Perhaps we lack proper anti-trust enforcement? Maybe it is telling that since the 1995 harmonizations we have suffered real declines in productivity masked by equity then debt bubbles? I recently had a case issue after 12 years of prosecution (missed the patent term extension though – that seems fair – they got the pistols so they get the pesos) … got another that is 11 years and stuck in LIE …

    I can point to one measure of innovation that we know is not attributable to large companies and that is lagging stock prices coupled with miniscule pay-outs in patent cases … That tells me that like all status quo / historical norms the folks in power want to EXPENSE innovation not VALUE it …

  12. Patent Agent suggests that tension exists between In re Bernhart (newly programmed gpdc is new machine) and Bilski plus Ex Parte Langemyr, as well as perhaps Benson (gpdc does not count). Does the en banc Bilski opinion silently overrule the panel opinion in Bernhart?

  13. Dennis -

    I’ll answer your question about how to draft software claims if you answer mine about how:

    “graphically displaying “X-ray attenuation data produced in a two dimensional field by a computed tomography scanner” ”

    doesn’t qualify as:

    “insignificant postsolution activity”

  14. Christian: Man, I wished the CAFC – and, to be honest, the whole patent world – supported that test.

    My ideal test for patentability of software would be simple: utility. Does the invention solve a specific problem? And not just a “real-world” problem, but also a virtual one – e.g., a particular problem that sometimes arises in a computing scenario, such as a particular encryption/decryption algorithm?

    The focus of inquiry should be on whether “one of ordinary skill in the art” could apply the claimed invention to a particular problem. If PHOSITA could foresee applying the invention to a broad set of unrelated problems, it’s likely preempting and unpatentable. On the other hand, if PHOSITA simply can’t understand how to use the invention ;) , it’s vague. End of story.

    I think the problem/solution approach would satisfy most of the haters by reducing vague/meaningless/poorly drafted applications, while protecting meaningful software inventions with demonstrable, specific utility for tackling known problems.

    Frankly, I think that’s where the CAFC intended to go. But I think they ended up in Diehr-land as a result of three things:

    (1) dissatisfaction with the results of their first attempt to get there (State Street), which was both inadequately elucidated and abused by less skilled practitioners (in the “a process, comprising: taking some data… munging it… and producing a result” style);

    (2) an inaccurate, outdated, and downright desultory view of the nature, field, and value of software; and

    (3) a dearth of Supreme Court opinions in which to ground any such holding. (This may have been the most influential factor – the CAFC’s rote, and almost fawning, repetition of Diehr amounts to a plaintive begging of the Supreme Court not to accept cert.)

    - David Stein

  15. Christian: Man, I wished the CAFC – and, to be honest, the whole patent world – supported that test.

    My ideal test for patentability of software would be simple: utility. Does the invention solve a specific problem? And not just a “real-world” problem, but also a virtual one – e.g., a particular problem that sometimes arises in a computing scenario, such as a particular encryption/decryption algorithm?

    The focus of inquiry should be on whether “one of ordinary skill in the art” could apply the claimed invention to a particular problem. If PHOSITA could foresee applying the invention to a broad set of unrelated problems, it’s likely preempting and unpatentable. On the other hand, if PHOSITA simply can’t understand how to use the invention ;) , it’s vague. End of story.

    I think the problem/solution approach would satisfy most of the haters by reducing vague/meaningless/poorly drafted applications, while protecting meaningful software inventions with demonstrable, specific utility for tackling known problems.

    Frankly, I think that’s where the CAFC intended to go. But I think they ended up in Diehr-land as a result of three things:

    (1) dissatisfaction with the results of their first attempt to get there (State Street), which was both inadequately elucidated and abused by less skilled practitioners (in the “a process, comprising: taking some data… munging it… and producing a result” style);

    (2) an inaccurate, outdated, and downright desultory view of the nature, field, and value of software; and

    (3) a dearth of Supreme Court opinions in which to ground any such holding. (This may have been the most influential factor – the CAFC’s rote, and almost fawning, repetition of Diehr amounts to a plaintive begging of the Supreme Court not to accept cert.)

    - David Stein

  16. sorry to address the question you asked (was off on a tangent) . It MAYBE possible to circumvent the restrictions by referring to a specific computer architecture rather than a general purpose computer- it will be interesting to see how this pans out. I think that this case is significant – it returns the concept of invention and whether it lies in the algorithm. This has tightened up the law significantly because it’s thrown out “form over substance” claims at least in process claims. I see no reason why the same logic should not hold true when addressing “Beauregard” claims. But then we all know that courts aren’t always the most consistent bodies. Hope this helps.

  17. I have a simple test: Is the innovation solely in computational logic (e.g. an algorithm or “computer program as such” which the Supreme Court says is not patentable) or in a field of applied natural science which could be an invention? I think it gives enough scope to allow the fringe cases while keeping computer programs as literary works and subject to a more flexible and competitive copyright regime. (and in compliance with international treaties). I worked on the legal research side of the anti patent battle here in Europe but also did a lot of research into American law and international treaties. I’ll relaunch my old site codeliberty.org soon and post all the old papers. The court basically highlighted in this case that the Federal Appeals Circuit erred in judgement in Re:Alappat and other monstrous deviations from logic where they invoked Chakrabarti wrongly as a license to patent anything you like, conveniently skipping over the exclusion of abstract subject matter and algorithms.

  18. So have we answered the initial question?

    How you might properly claim computer software in a way that avoids § 101 rejections?

    Suggestions to answer the the question asked, rather than the polemical issue on whether math is symbolic or tangible, or language for that matter?

  19. David-

    “And I submit my reply on a web browser, connected via TCP/IP to a webserver for storage in a back-end relational database for instantaneous transmission (upon request) to the ENTIRE WORLD”

    And don’t forget that your transmission is via signals, which would make the whole issue null and void.

  20. “I dont think that “computer operable medium in a computer operable systems” will be enough to pass the 101 test. Now the computer must do TRANSFORM datam note merely input, print, or display information. Will reduce the number of applications that merely automate manual processes.”

    LOL wut?

  21. “Will reduce the number of applications that merely automate manual processes.”

    If Section 103 didn’t deter the filing of those applications, why do you think Section 101 will?

  22. I dont think that “computer operable medium in a computer operable systems” will be enough to pass the 101 test. Now the computer must do TRANSFORM datam note merely input, print, or display information. Will reduce the number of applications that merely automate manual processes.

  23. It’s important to note that Bilski hinged critically on the last major SCOTUS opinion on the patentability of software… in 1981.

    I owned a computer in 1981 – a dinky Tandy Color Computer. It was truly state-of-the-art, with an entire four kilobytes of RAM. Its sole user interface was a BASIC interpreter. Many hours of programming in minutiae – shoving numbers into variables, extracting them, and POKE-ing them into particular registers – were required to achieve even the most minimal result.

    In this context, it wasn’t surprising that the 1981 Court regarded software, categorically, as too crude to constitute “invention” without additional components. Operating a computer *was* akin to operating a calculator – software was simply a primitive notation that facilitated the inventive steps occurring in the mind of the user.

    Of course, the CAFC’s holding may be recognized as legal wisdom. In clinging tightly to the last shred of 101 guidance from the Supremes, the court sought the position of greatest defense (and the path of least resistance) over a hotly contested issue. That type of deference may be respected as a (rare) homage to the structure of the court system.

    However, its rationale is technical nonsense. Modern software – in its impenetrable complexities, its vast capabilities, its reaching promise – cannot be lumped into the same genus as the tiny, limited “inventions” of the early heritage of computing. Shall we dismiss all of software as a set of manifestations of the mental construct of a Turing machine?

    Biochemistry might similarly be dismissed as simply the “conceptual” operations of atoms, which were principally described in 1869 by Mendeleev’s periodic table. Should it matter that those “concepts” are enacted by actual molecules, any more than that computing “concepts” are enacted by electrons in circuitry?

    By deferring to a 1981 decision on the technical merits of software, the CAFC summarily dismisses 27 years of the most abundant, fascinating technical progress achieved by man as conceptual, intangible, and abstract. And I submit my reply on a web browser, connected via TCP/IP to a webserver for storage in a back-end relational database for instantaneous transmission (upon request) to the ENTIRE WORLD, to wit: CAFC, your holding is technically dishonest.

    - David Stein

  24. Disappointing too to this European reader. Whereas an EPO Board of Appeal is free to run up the flagpole any new theory of patentability it fancies, without anybody having to follow it if they don’t want to, isn’t the CAFC supposed to set the line, that every inferior tribunal MUST thereafter follow, to the letter, and so has a heavy duty to define that line with clarity? Are we to understand that the CAFC distilled “machine or transformation” as the clearest line it could find, in the SCOTUS jurisprudence binding on it? In that case, any blame for a want of clarity lies with SCOTUS, not the CAFC.

  25. A computer program is something that controls the processing of information. If you are trying to patent a computer program then ultimately you are trying to patent the process that is executed by running the program. As I see it, a patentable invention should be able to reside either in (a) the “external” practical functionality provided by the program (what the program does) or (b) in the “internal” technical details of the program for delivering the external practical functionality (how the program does what it does).

    In either case, the invention is first and foremost a new and improved process. If the process is patentable, a computer programmed to perform the process should also be patentable, as should a corresponding program product. That’s how it works in Europe.

    101 eligibility under Bilski is about what kinds of “whats” and “hows” are eligible. In Europe that question is all about “technicality”. Bilski rejects a technological arts test and says that machine-or-transformation is different. But what does it say beyond “abstract = bad, physical = good”? The big disappointment in Bilski is that, having set up the question with a reasonable degree of sophistication, it not only fails to provide any clear guidance beyond a limited set of circumstances, but also manages to leave hanging many more questions than it answers.

  26. “So? It is (if properly drafted) directed to a functional apparatus that can interact with a computer. The MPEP has this right. I recommend reading it carefully.”

    I was just having this conversation the other day. In fact, I was unable to find any clause in any Beauregard claim that had an apparatus that actually performed any function other than “store x information”. The only thing I could find were claims that had an apparatus that functioned to store x information which in turn functioned to cause some effect. Now, I could be wrong, but any CD RW has that functionality (that of storing x information, assuming the information isn’t over 700mb etc.), the only thing it lacks is information thereon having a certain functionality. Frankly, all Beauregard claims appear to be bogus because of this.

    “And, the corresponding method claim, if tied to the appropriate “particular machine,” should also be patentable subject matter. This last point is the one that I expect Examiners will simply not get (or will be instructed not to get).”

    How exactly do you propose to tie a method claim to an appropriate “particular machine”? Do tell. I’d especially like to know you do this and still have direct infringement ever take place.

  27. Paul E — excellent comment.

    “There is no transformation of a physical computing device software can cause that was unforeseen by the prior art of the device’s processes. Software patents only subtract from the computer owner’s full exercise of his computer’s capabilities.”

    Yup. Put another way: it’s all per se obvious and if it weren’t for the abuse of strict TSM (prior to KSR) and, now, the bogus “secondary factors” by software prosecutors (“if it was so obvious, why didn’t anyone commercialize it before?”), we would never have gotten to this sad point.

    “On a more personal note, it was gratifying to read Judge Mayer calling beeswax on the Chakrabarty Court’s turning of the legislative history on its head in regard to “anything under the sun that is made by man.” That was a foul ball proclaimed as a home run that has bothered me for many years.”

    Word.

  28. Hi, ironic slip.

    Thanks for your thoughtful reply. It appears that we agree on the fact that software is written notation/symbols, so kudos to us for finding consensus on that much.

    Where we appear to differ fundamentally is in regard to whether software *should* be patentable. That topic goes to the socio-economic/legal side of the discussion, as opposed to the fact we agree on. I suspect we’ll be less successful in finding consensus there.

    I’m willing to discuss such issues, but wonder whether it would go very far to persuade either of us to change our ultimate positions?

    FWIW, I’m an interoperability wonk and am thoroughly convinced that the case for software patents is weakest when they interfere with interoperability, particularly if we are going to build a connected world.

    The global trend, I think, is that governments are more and more insisting that exclusivity be abolished in this area, largely through procurement policy change but also through antitrust cases such as Commission v. Microsoft in Europe. See e.g., my working draft Universally Accessible and Interoperable Specification here for concepts and citations. link to universal-interop-council.org

    In the U.S., I think the strongest legal case for a categorical exclusion of software patents is not section 101. Instead, in my opinion it’s prior art. There is no transformation of a physical computing device software can cause that was unforeseen by the prior art of the device’s processes. Software patents only subtract from the computer owner’s full exercise of his computer’s capabilities.

    That puts software patents on a collision course with precedents such as John Deere and Bonito Boats (“Congress may not … ‘authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, *or to restrict free access to materials already available’”*).

    Of course, that would have a dollop of Free Speech thrown in. Would the argument fly? I’d rather bet on horses than judges even on non-precedential cases. :-)

    That argument would, ultimately, draw the patentability line between the hardware’s bit registers and the software bits, which is where I think it belongs.

    I co-authored some draft legislation a few years back during the software patent constitutional crisis in the E.U. that attempts to define that line. link to groklaw.net The language isn’t completely debugged and is somewhat bent to reflect the context of the E.C.’s Computer-Assisted Inventions Directive ultimately shot down in Parliament, but I think it does identify a bright line that can be drawn and produce a predictable result in most situations.

    Granted that my crystal ball is a 1946 model and its batteries are weak, but I see a pretty strong trend toward elimination of software patents. Software patents in the E.U. are not worth the paper they’re written on and India has banned them. More and more major software vendors in the U.S. are obtaining software patents only for defensive purposes and the free and open source software movement is gunning for software patents globally.

    As to Bilski, I think the real message from that decision is the expressed willingness of the majority to consider restricting or eliminating process claims that recite involvement of a computer. That’s a sea change for a court that was on a patentability expansionist trend for a couple of decades under Judge Rich’s tutelage.

    On a more personal note, it was gratifying to read Judge Mayer calling beeswax on the Chakrabarty Court’s turning of the legislative history on its head in regard to “anything under the sun that is made by man.” That was a foul ball proclaimed as a home run that has bothered me for many years.

    But short story, my reason for my post was as said, to point out that symbols should not be conflated with what they symbolize in the quest for truth. Whether languages or literary works should be patentable at least brings the debate into the realm of the actual facts.

    I think the arguments for overlap between patent and copyright law are particularly weak with software patents. The software industry flourished before software patents were common and virtually all economic studies have shown no net economic benefit from their existence other than in the legal profession. I see no compelling justification for patent incentives in this area.

  29. Paul E:
    Excellent point about ink scratched on paper. 2+2=4 is just ink on paper (or dots on computer screen at present moment). It’s the mental associations that our brains give to these scratches/dots that give them meaning.

    On the other hand, 35 USC 101 starts with “Whosoever invents”. Implied in that is that the inventor will have certain mental appreciations regarding that which he regards to be his invention. So the question boils down to what (one or many things) did the inventor invent? Was it just the abstract mathematical concept or was it also the application of the concept to a real world situation with real world consequences? If the inventor files an affidavit attesting to the latter, who is the PTO to say no, you merely invented the abstraction? On what factual basis can the courts say, no, you merely invented the abstraction?

  30. Dennis writes: ‘In all likelihood, claim limitations focused at general machines such as a “computer” will not be considered tying to “particular machine.” ‘

    Is there a basis for this assertion? I disagree. I don’t think you can make such a sweeping statement as the nature of the particular machine provided the patent has the requisite transformation. The “particular machine” argument you are trying to make, taken to its logical extreme, would require detailed specificity regarding the “particular machine” (e.g. a Motorola 68,xxx) that would have no business in a well written claim.

  31. Paul E:

    respectfully, you’re own statements are overly broad :: mathematics is the language of nature that we humans have created via proof … proof generally requires observation … that does not eliminate paradox or different approaches … *but* the symbols are ours not nature’s … betrand russell attempted to capture an all-encompassing proof – a set of all sets, the grand proof of “mathematics” (at the end of the 19th century!) – a construct & hubris that was ripped apart by kurt goedel …

    who … btw … created a *new* set of symbols for his proof – how else to reveal what we can as humans “know” than by establishing new symbols to reveal the paradox – we will *always* have subjects (and subject matter) that by definition must exist outside of any other definition or set or context or semantic … we should heap praise & defendable patents on those who can invent novel & nonobvious software -

    software is no different & no less invaluable to our country – repeatedly asked, is RSA patentable subject matter? abstract mental steps? business method? signal? i’ll argue that it was important that it was patented because of the trade-off in patent law unlike say trade secret voting machine code? we later find out that the Brits did not disclose any such proof for public notice … so do you feel better that one set of folks restricted knowledge and another did not? what about quantum money? one way functions (SHA-1 is looking quite dated)? are these subjects for which patent protection is somehow less deserving? you may be conflating NP with P but I believe America benefits when *inventing* NP solutions …

    for a mathematical proof of *programming complexity & reducibility*, essentially goedel applied to software/programming, see greg chaitin (and others under “algorithmic information theory”) … you can run his proofs on your machine … there are plenty of proofs that are inherently unknowable in a binary sense and can exist as both a yes and a no in a binary sense – berry’s paradox, “this statement is false”, etc.

    QED :: there is “knowable” & “unknowable” – each of these categories has within it patentable subject matter … encouraging public notice of potentially patentable subject matter is politically charged but the math & theory concerning nature should not be dismissed as being “merely abstract” – inventors should engage in how to define this with clearer case law – there is no such thing as technology being ahead of the law – the law is the law …

    (ironically, many of the amicus briefs were at odds with the other positions taken to reform the patent act … imagine that)

  32. David, 3LMudder, Jim — Can’t agree that software is math except in a metaphysical sense that also makes all four of us purely math ourselves. May I permissibly shoot my purely mathematical bullet into your purely mathematical heart? I doubt SCOTUS or the Federal Circuit are ready in context to make such leaps, quantum physics notwithstanding.

    Returning from the asteroids, software is binary mathematical *notation,* not binary math itself, a record of data and purely mental acts that is processed by the physical device. Software does not act upon the computer; it is mathematical notation that is acted upon by the physical device. That is why software is copyrightable; a computer program is a literary work.

    Write “2 + 2 = 4″ on a sheet of paper then read it. What you are reading is a written statement composed of symbols, not mathematics. It is no less symbolic if written in binary notation.

    Moreover, symbols store only the meaning we ascribe to them. 2 + 2 could equal 8 if I decide that “2″ is my symbol for what we traditionally think of as “4.” Think about encrypted computer files here. What does “2″ mean if it is encrypted as a string of other symbols? Will the mathematical operations performed using encrypted data of necessity no longer be susceptible to mathematical proof?

    Over 2,000 years ago, Pingala noted his binary maths using long and short syllables rather than zeros and ones. Four short syllables (binary “0000″) in Pingala’s system, however, represented the number one, not zero. Does that mean that his binary math was not binary math or would produce different solutions?

    Likewise, if I draw a picture of a deer on the wall of my cave, is my drawing actually the deer?

    Moral of the story: symbols are not what they are symbolic of. Binary notation is a *language,” not mathematics itself.

    I suggest folks avoid conflating mathematics and the symbols used to record mathematical operations. They are distinct and separate, on different planes of existence. In legal context, binary notation is a language composed of physical symbols, whilst mathematics is a law of nature.

    Those are the facts. Principled software patentability arguments whether yea or nay should in my opinion be framed accordingly.

  33. What a bunch of the more avid everything-should-be-patentable people have missed is the Progress Clause:

    ” To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries; ”

    The correct ruling would be a Supreme Court ruling declaring that patents are only allowed, *Constitutionally*, in fields in which they promote the progress of science or useful arts. Specifically, monopolies can promote this progress only by providing an incentive to publish.

    Pure business method patents, and pure data-processing software patents, have undeniably retarded the progress of science *and* the useful arts. There is ample evidence for this. In fact, there is not one pure software patent (as opposed to patents on manipulating other physical processes using a computer) which has given anyone any incentive to publish; they have served soley to suppress new technology. In fact, in violation of the patent bargain, many patentholders fail to publish adequate descriptions (i.e. working software source code) even after acquiring a patent. In software, patents are simply collected after doing research which would have been done anyway, without the existence of patents.

    This is the true Constitutional reason software patents need to be tossed, now.

  34. “non-senior counsel at major corp” has pointed out exactly what you have to do to patent software.

    Don’t try to patent general-purpose data-transformation algorithms. They’re unpatentable, just like they always should have been. If you could theoretically do the entire thing in your head, with the assistance of pencil and paper, given an unlimited amount of time, it’s unpatentable.

    If you’re patenting a computer-assisted rubber-curing process, or something along those lines, you’re fine, but you have to *describe* it that way.

    If you can’t tell the difference, you need to learn more about computers.

  35. I think David Stein is getting close to the core of the problem. Both the Constitutional language and every version of the patent act since 1793 are based on a misunderstanding, albeit one justified by then current science: that matter is indivisible. Thus, mathematical and algorithmic constructs were different from matter.

    Now we know that what we call matter is an interaction with our senses and instruments of clouds of probability of location of sub-subatomic particles, as described in a space of maybe 20 dimensions. Sounds like sci-fi, but it is not.

    In addition, it is surely an abstract mathematical construct. So mathematical v. physical is a chimerical distinction. So using section 101 is not how to eliminate applications that attempt to patent, say, Newton’s laws or the laws of thermo or corollaries to them.

    Section 103 on non-obviousness is the key. So if someone works out something that is useful and non-obvious to a POSIT, then a reading of either the Constitution or the Patent Act in connection with a current understanding of the physical universe should not find any distinction between math describing finance and math describing physics or chemistry or biology.

  36. A difficult question to answer. At this point, I want to wait for the USPTO guidelines concerning software claims in order to develop a reasonable strategy.

  37. “Ex parte Langemyr provides insight into the PTO’s current position on Bearegard claims, in asserting that ‘[s]imply placing instructions on a computer readable medium, wherein the instructions are designed to perform mere manipulations of abstract ideas, should not convert an otherwise non-statutory method into patentable subject matter.’ The BPAI appears to be taking the position that computer-readable medium claims that recite software instructions in the body, without more, are non-statutory.”

    No, if your quotation is correct then the BPAI is taking the (legally correct) position that a software-readable medium claim is not patentable if the program instructions are directed only to manipulation of abstract ideas. This is completely consistent with Benson.

    “Further, the BPAI appears to return to an argument against the patentability of software which was repeated to me years ago, and goes ‘[a]though the instructions, when executed in a computer, may cause a transformation of the computer, the step of executing the instructions in a computer is not claimed here. In other words, the claim is not directed to a computer or machine loaded with and/or executing the software.’

    That statement may have been true then, and might be true now, but is completely irrelevant to the patentability of software-readable medium claims. True, a software-readable medium claim is not directed to a computer. Nor is it directed to a method. So? It is (if properly drafted) directed to a functional apparatus that can interact with a computer. The MPEP has this right. I recommend reading it carefully.

    “Thus, perhaps practitioners now need to recite the loading of the software on a computer or the executing of the software on a computer to make the claim statutory, essentially turning your ‘apparatus’ claim back into a process claim.”

    Bad advice. If your computer-readable medium claim is truly directed to an unpatentable abstract idea, then converting it to a method isn’t going to help. Similarly, if a method is unpatentable because it is directed to “mere manipulation of abstract concepts,” then the corresponding computer claim and computer-readable medium are each likely to also be unpatentable. The converse is also true – if an apparatus claim is directed to more than the mere manipulation of abstract concepts, then it is likely directed to patentable subject matter. And, the corresponding method claim, if tied to the appropriate “particular machine,” should also be patentable subject matter. This last point is the one that I expect Examiners will simply not get (or will be instructed not to get).

  38. “Worth reading:
    link to patenthawk.com .”

    If you take advice on patent law from someone who is neither an agent nor an attorney, and who appears to be treading perilously close to the boundaries of the unauthorized practice of law, then you get what you deserve.

    In my opinion, that is.

  39. Before Bilski, the 101 standard as applied to computer inventions was vague, susceptible to abuse by the patent office, and filled with wishy-washy language and concepts. It is so great to see that the CAFC, in it’s en bancable wisdom, addressed all these issues with that old standard.

  40. Ex parte Langemyr provides insight into the PTO’s current position on Bearegard claims, in asserting that “[s]imply placing instructions on a computer readable medium, wherein the instructions are designed to perform mere manipulations of abstract ideas, should not convert an otherwise non-statutory method into patentable subject matter.” The BPAI appears to be taking the position that computer-readable medium claims that recite software instructions in the body, without more, are non-statutory.

    Further, the BPAI appears to return to an argument against the patentability of software which was repeated to me years ago, and goes “[a]lthough the instructions, when executed in a computer, may cause a transformation of the computer, the step of executing the instructions in a computer is not claimed here. In other words, the claim is not directed to a computer or machine loaded with and/or executing the software.”

    Thus, perhaps practitioners now need to recite the loading of the software on a computer or the executing of the software on a computer to make the claim statutory, essentially turning your ‘apparatus’ claim back into a process claim. Although this approach may not pass muster under the machine test (general purpose computer), it might under the transformation test. However, how you would successfully assert such a claim on a direct competitor (e.g., one who develops and sells software), beyond arguing that they surely must have infringed in development test situations, is not yet clear to me.

  41. Kevin Grierson said: “I must admit that the court’s example of the x-ray data display leaves me puzzled. Are they saying that tying a program to a particular type of data makes the program transformational? Or was it the fact that the data was a representation of a real world object?”

    Kev – (can I call you Kev?), I have been scratching my head about this as well. Here is what the opinion ‘clarifies’ -

    “This [x-ray] data clearly represented physical and tangible objects, namely the structure of bones, organs, and other body tissues. Thus, the transformation of that raw data into a particular visual depiction of a physical object on a display was sufficient to render that more narrowly-claimed process patent-eligible. . . . [T]he claim was not required to involve any transformation of the underlying physical object that the data represented. . . . So long as the claimed process is limited to a practical application of a fundamental principle to transform specific data, and the claim is limited to a visual depiction that represents specific physical objects or substances, there is no danger that the scope of the claim would wholly pre-empt all uses of the principle.”

    It seems like the majority is saying:

    1. If a claim recites a method for displaying data wherein the data represents a “physical and tangible” object, then displaying that data on a computer screen will satisfy the transformation test. [What about claims for simulation software, e.g., MATLAB that displays a representation of a hypothetical (i.e., imaginary) “physical and tangible” object? Good question]

    2. Transformation of data alone may satisfy the transformation test, provided that the pre-transformed data represents something “physical and tangible.”

    3. Here is a tip for improving the odds that we will not shoot down your method claims: please endeavor to “more narrowly-claim[ the] process” and see that “the claimed process is limited to a practical application of a fundamental principle.” [In other words, if your client is considering a patent for a entirely novel method for transforming specific data, e.g., an improved method for data compression, you might want to consider the trade secret alternative, especially if it is NOT “limited to a visual depiction that represents specific physical objects or substances”]

    AND

    4. Hell hath no fury like a court considering a “claim [that] would wholly pre-empt all uses of the [fundamental] principle.”

  42. UTEX, I hope you are right. However, the Bilski court, when discussing Benson, didn’t make any distinction between the Benson algorithm processing “abstract data” vs “real data.” Nor did it refer to the Benson algorithm as lacking application and context.

    Instead the court said that it was ineligible patent subject matter because its only utility was to operate on a computer. Thus, limiting the claim to a computer was not really a limitation at all according to the court.

    Keep in mind that some of the discussion preceding the court’s description of Benson refered to processes that were patentable because certain steps were real world steps while other steps were performed by a computer. Adding all that together gave me the impression that a process that operates solely on a computer does not satisfy the machine prong of the test.

  43. And here I thought a theory of everything remained to be found, but it’s right here, on this blog. Seriously though, we don’t know the equations that transform a physical object into pure math, but we suspect it is possible and people are working on models. Software, however, is a different beast — in my opinion.
    But David is right that this isn’t practically helpful. Unless this connection to physicality is the heart of what the court was struggling with as its limiting principle.
    But I respectfully accept that others see object code in RAM [which isn't really a process claim, is it?] as distinct from a description of the process of computer software.
    Apologies from a student. Carry on.

  44. To everyone:

    Even today, while the shock waves of Bilski are still reverberating, we need to start reaching consensus on three issues:

    (1) What the CAFC’s majority opinion (and SCOTUS precedent) actually mean;

    (2) How the USPTO examining corps and BPAI are likely to react; and

    (3) How the patent bar should respond – both in terms of drafting cases today, and in terms of options for addressing (1) and (2).

    I am expecting PLI, AIPLA, NAPP, etc. to serve as focal points.

    Just – PLEASE – let’s try to coalesce as a body of practitioners ASAP. I have clients to advise, and while I can definitely provide counseling based on my own answers to these three questions, I’d feel much more comfortable with some backing by trusted sources.

    - David Stein

  45. 3L Mudder: The argument has often been raised that software = mathematics, because it’s just a “conceptual arrangement” of instructions. Such arguers sidestep the fact that software is physically represented as data in (physical) memory connected to (physical) computing components that (electronically, i.e., physically) perform the operation.

    But by the same token, chemistry also = mathematics. The invention is really a description of a composition that is expected to react according to the laws of chemistry… which are just applied laws of physics… which are applied models described via mathematics. Any patented chemistry invention is a “conceptual arrangement” of atoms.

    Similar arguments can be applied to the mechanical and electrical arts. The common theme – in ALL of these cases – is that the patented invention is still an applied, useful concept, which MAY be implemented in the physical world. That’s a basic tenet of patent law, and the software arts do not differ from the others in this regard.

    - David Stein

  46. “computer software is ultimately just a mathematical equation.”

    @3L Mudder: and so are physics, chemistry, and biology. Heck, even music and architecture too. Nature is mathematics in its purist form. It’s not that simple.

    But if you think it is, then you are much smarter than I, and I need to find a new profession.

  47. Two points from the opinion:

    (1) For a machine implementation, that issue was not decided by the CAFC; and

    (2) For a transformation, it must be central to the purpose of the claimed process and the electronic transformation of the data itself into a visual depiction was sufficient in Abele.

    Fundamentally, one can maybe look to the EP’s handling of software claims related to “technical effect” that goes beyond the normal physical interactions between the program and the computer, as a guide. See, link to epo.org

    Maybe?

  48. UTEX, I’m reading this as a line between Library code and Application code. Library code meaning general-purpose routines, (“compress this file”), vs. Application code, (“read these glucose levels from a file, compress them using LZW, calculate a checksum of the result, then if it is an even number, send a signal to an alarm.”) [Purposefully silly example.]
    The library code lacks the limitation to a general principle, compression in the abstract.
    As an aside, to everyone blaming the courts, I think the problem is a huge gap in legislative activity. The judges are just struggling to deal with a fundamental problem: computer software is ultimately just a mathematical equation, and no amount of sophistry can solve that.

  49. Thanks, UTEX, for a refreshing dose of intelligent and articulate commentary.

    However, Malcolm is still a poopyhead.

  50. dblagent007 – I don’t agree with your conclusions regarding the Bilski court’s discussion of Benson. The claims at issue in Benson were written purely to translating the BCD to binary numbers without any application or context. Thus, the claim was purely the steps of converting one piece of abstract data into a second piece of abstract data. I believe that is the definition of an algorithm. Regardless of whether or not that algorithm is performed on a computer doesn’t change the fact that the claim is defining the scope of an algorithm, which is not patentable. Because the algorithm had no other utility than operating on a digital computer, the effect of simply tying it to a digital computer was an attempt to pre-empt all uses of that algorithm.

    Most real software related inventions don’t just deal with the processing of abstract data for the purpose of performing a cool algorithm. Most real software related inventions process real data that means something and performs some kind of signaling, transmission, or display of processed results to the user. The court implied in its discussion of the Abele case that those types of claims would be patent eligible. It seems like many of the “death to all software patent” folks posting here are really trying to stretch Bilski into calling into doubt all software patents, when, in fact, Bilski not only doesn’t do that, but even seriously calls into question the PTO’s and BPAI’s overreaching conclusions regarding the general purpose computer. I believe that the Bilski court’s statement that, “the claimed process operated on a machine, a digital computer, but was still held to be ineligible subject matter” shows that tying software-related inventions to a gp computer will be sufficient in many cases, unless the claims simply address processing of abstract information for performing some kind of algorithm without any context or purpose.

    Breadcrumbs is right on point with this that, according to prior caselaw, a general purpose computer ceases to be a general purpose computer when programmed to perform the tasks of a particular program. So, even though a software related application is tied to a gp computer, when the software is executed by that gp computer it becomes a special purpose computer for performing the claimed steps.

  51. “Many people seem to think that software will fall under the machine prong of the court’s new test.”

    It depends. Do you mean (1) software processes actually being performed or (2) software embodied in an apparatus, like a computer-readable medium? Bearegard claims are not computer-process claims, but rather apparatus claims (a medium). As long as you haven’t defined the medium to be a signal, you’re fine.

  52. What about in financials if you created some great hedging algorithm and based it on a real world representation of value say a commodity like gold or pork bellies and “transformed” those into another real world representation of value such as barrels of oil. I know commodity markets you are not actually buying a bushel of wheat to deliver to your house but maybe it could be enough. I guess this could create “straw-man” arguments and form-over-substance type arguments.

  53. What about in financials if you created some great hedging algorithm and based it on a real world representation of value say a commodity like gold or pork bellies and “transformed” those into another real world representation of value such as barrels of oil. I know commodity markets you are not actually buying a bushel of wheat to deliver to your house but maybe it could be enough. I guess this could create “straw-man” arguments and form-over-substance type arguments.

  54. Many people seem to think that software will fall under the machine prong of the court’s new test. However, the court explained Benson as follows (from pages 12-13 of the opinion):

    “Interestingly, Benson presents a difficult case under its own test in that the claimed process operated on a machine, a digital computer, but was still held to be ineligible subject matter. However, in Benson, the limitations tying the process to a computer were not actually limiting because the fundamental principle at issue, a particular algorithm, had no utility other than operating on a digital computer. Benson, 409 U.S. at 71-72. Thus, the claim’s tie to a digital computer did not reduce the pre-emptive footprint of the claim since all uses of the algorithm were still covered by the claim. ”

    The court seems to be saying that any process that has no utility other than operating on a computer does not qualify under the first prong. Most software processes do not have any utility outside of operating on a computer, which means that software claims are likely to fall outside of the first prong.

    Strangely, the court seems to say that software may fall under the second prong so long as it is limited to a specific type of data that represents physical and tangible objects.

  55. Lots of scroll-down-and-hit-Next (DC can you fix this?), but Kevin, this post on another Patently-O thread goes directly to your question:

    Haven’t courts already denied this line of logic from the PTO (general purpose computer vs. particular computer)? as cited in In re Lowry, In re Bernhart and Fetterer states:
    There is one further rationale used by both the board and the examiner, namely, that the provision of new signals to be stored by the computer does not make it a new machine, i.e. it is structurally the same, no matter how new, useful and unobvious the result. . . . To this question we say that if a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program; its memory elements are differently arranged. The fact that these physical changes are invisible to the eye should not tempt us to conclude that the machine has not been changed. Bernhart, 417 F.2d at 1400.

    Posted by: Patent Agent | Oct 30, 2008 at 12:45 PM
    link to patentlyo.com

    I believe the courts outrank the BPAI. Of course, the BPAI may need to be reminded of what the law actually is.

  56. The issue of what is a “general purpose ccomputer” has been decided in the past by WMS Gaming. I belive under Bilski, a computer that can perform an algorithm would satisfy 101.

  57. Proposed claim and questions

    A method comprising:
    (a) representing a specific original physical reality with specific original data
    (b) electronically transforming the specific original data into specific transformed data (b’) using a novel and nonobvious process
    (c) representing the specific transformed data (c’) as a specific transformed physical reality (c’’) in the form of a visual depiction

    Apologies for the clumsy language.

    My questions:
    1)Do I need c’’ for 101?
    2)Do I need c’ for 101?
    3)Do I need b’ for 102/103 or can I derive novelty and nonobviousness from other elements?
    4)Is a “computer simulation” (e.g. CAE, FEA, FSI, CFD) a transformation?

    Thanks for any thoughts.

  58. “What does this do to Beuregard claims”

    nothing because they are apparatus claims and Bilski is limited to process claims

  59. So stating “A computer-implemented method for….”

    and then stating “receiving data and transforming data into….” is OK?

  60. I have had several Beauregard claims rejected based on Bilski (prior to the CAFC’s decision), as have other members of NAPP (National Association of Patent Practitioners). Whether the CAFC would agree, I can’t say, although their language about tying processes to a physical step not being sufficient seems to me to indicate that just reciting that the instructions are in a computer readable medium will not suffice.

  61. What does this do to Beuregard claims e.g.:

    computer-readable medium claims (comprising instructions …)

    computer-readable means claims

    and other types of software claims? (E.g. Claiming a method as a software system)

    Especially considering the fact that many software applications are shifting from being on CD-Roms, floppies, disks, etc., to being distributed and downloadable on the Internet, on websites and even mobile phones or related devices?

  62. UTEX & KEVIN Good posts.

    Regarding Transformation, it appears that the transformed article needs to at least be “representative of physical objects or substances.” Notably, transformation of “legal obligations or relationships, business risks, or other such abstractions” do not qualify as ‘transformations’ under the new test.

  63. The CAFC may not have spoken on the general purpose computer issue, but the BPAI, in Ex Parte Langemyr, expressly held that a general purpose computer won’t cut it. So, if you want your claims allowed now, folks, you’ll have to find a more specific machine, or use the transformation arm of the analysis.

    I must admit that the court’s example of the x-ray data display leaves me puzzled. Are they saying that tying a program to a particular type of data makes the program transformational? Or was it the fact that the data was a representation of a real world object? If it’s the latter, it would be difficult to see how most financial software could be claimed in a way that satisfies the Bilski analysis. On the other hand, if a particular type of data is all that’s required, that seems kind of counterintuitive, unless it would not be obvious to apply the program to that kind of data.

  64. In discussing the patent inellible claims of Abele, the Bilski court noted that, “The claim did not specify any particular type or nature of data; nor did it specify how or from where the data was obtained or what the data represented.” The court also clarified the specific holding in Abele by saying that “the electronic transformation of the data itself into a visual depiction in Abele was sufficient; the claim was not required to involve any transformation of the underlying physical object that the data represented.” I think these two statements from the court provide, at least, an interim roadmap for how real software inventions (not ones like a computer-implemented method for making money) need to be drafted. First, characterize your data or information including, where applicable, where it came from, what it represents, etc. Second, provide a physically perceived transformation of that data. For example, many software inventions display a resulting feature or state or whatever to the user, it could also cause transmission of some kind of information to another process or trigger some other physically perceivable result. It appears that in order to get over the examples of patent inelligible processes is to claim something other than abstract data and provide some physically perceivable “transformation” such as putting something on a display that represents the processed data.

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