Ongoing Debate: Is Software Patentable?

by Dennis Crouch

A pair of recent Federal Circuit decisions continue to highlight ongoing ambiguities and difficulties regarding the scope of patent subject matter eligibility for software related patents.

  • Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), — F.3d —-, 2012 WL 3037176 (Fed. Cir. 2012) (computer related financial claims are not patent eligible).
  • CLS Bank Intern. v. Alice Corp. Pty. Ltd., 103 U.S.P.Q.2d 1297 (Fed. Cir. 2012) (computerized stock trading platform claims are patent eligible).

Both decisions agree on several main points: that the mere inclusion of a computer limitation does not make a claim patent eligible and that the claim form (method, system, etc.) does not change the subject matter eligibility analysis. Although perhaps a revisionist history, Bancorp explains that the differing outcomes are based upon factual distinctions in the two cases:

In CLS, we reversed the district court and held that method, system, and medium claims directed to a specific application of exchanging obligations between parties using a computer were patent eligible under § 101. In faulting the district court for “ignoring claim limitations in order to abstract a process down to a fundamental truth,” we explained that the asserted claims in CLS were patent eligible because “it [wa]s difficult to conclude that the computer limitations … d[id] not play a significant part in the performance of the invention or that the claims [we]re not limited to a very specific application of the [inventive] concept.” Here, in contrast, the district court evaluated the limitations of the claims as a whole before concluding that they were invalid under § 101. As we explained above, the computer limitations do not play a “significant part” in the performance of the claimed invention. And unlike in CLS, the claims here are not directed to a “very specific application” of the inventive concept; as noted, Bancorp seeks to broadly claim the unpatentable abstract concept of managing a stable value protected life insurance policy.

Despite this attempted reconciliation, it is clear that the CLS majority has a different approach to subject matter eligibility questions. Perhaps the key difference is the question of how we think of “the invention.” In CLS, the invention is defined by the claim. In Bancorp and the CLS dissent, the court looks for the core inventive concept as the starting-point for its subject matter eligibility analysis.

It is simply ridiculous that after 40 years of debate, we still do not have an answer to the simple question of whether (or when) software is patentable.

410 thoughts on “Ongoing Debate: Is Software Patentable?

  1. Ex parte Lundgren relies on State Street Bank's "concrete, tangible result" test.  It therefore is overruled by In re Bilski, and condemned with utmost contempt by Bilski v. Kappos.  

    May I caution you not to rely to heavily on overruled cases?

    From the case.
    "Since the Federal Circuit has held that a process claim that

    applies a mathematical algorithm to "produce a useful, concrete,

    tangible result without pre-empting other uses of the

    mathematical principle, on its face comfortably falls within the

    scope of § 101," AT&T Corp. v. Excel Communications, Inc.,

    172 F.3d 1352, 1358, 50 USPQ2d 1447, 1452 (Fed. Cir. 1999), one

    would think there would be no more issues to be resolved under

    35 U.S.C. § 101. However, the examiner is of the opinion that

    there is a separate test for determining whether claims are

    directed to statutory subject matter, i.e., a "technological

    arts" test.

  2. You bite alright

    Whats great about this arguement is that the “even one example” is not needed because the law is clear. To your begging, one only has to point to the score board of law and ask you what he score is.

    As they say, svcks to be you.

  3. I agree there is no known reason to award patents for innovation in business methods. Patents obstruct free competition and should be issued only when the reason to grant them is strong enough to over-ride the public policy objective of fostering open free competition.

  4. Mr. Expert, I have already admitted that i am unworthy of attempting to figure out Ultramercial.  Why?  I think I have already said that one of my problems is that I am unaware of the claims or of the specification or of the facts in the case.  I further am not willing to spend the time to figure them out for your amusement.

  5. Well fear is abstract, even to the fearer, but HP is real, to both parties with an interest in the TV, refrigerator, motor car or whatever is the thing that is the subject of the HP agreement.

    And anyway, my point was that “abstract” is too slippery to serve as the eligibility test. Are you saying it is workable?

  6. Ned, although MOT, as a positive litmus test of eligibility, strikes me as somewhat lacking in elegance, I do prefer it to the test “Is it not abstract?”. Not sure how to argue “abstract”. One needs an eligibility test (such as “technical character”) that lends itself to reasonable debate, and MOT can serve, I would suppose.

  7. “Unanimous. Unanimous! UNANIMOUS! Repeat after me, unanimous”
    Except that Stewart, Blackmun, and Powell didn’t take part in the decision.

    “If as you say that the Federal Circuit would today find patent eligible the claims in Benson, I would tell you that you have a Federal Circuit in open revolt.”
    Nope … they would be playing by the rules of your favorite “MOT” test. Similarly situated claims like this are being allowed at the USPTO all the time — even by examiners who will slap a 101 rejection on anything. The problem is that Douglas didn’t understand the hardware portions of this claim — no doubt because nobody sitting in Supreme Court building understood them either.

    The plain and simple fact of the matter is that Douglas didn’t (and probably never did) understand anything about computers and/or software. The other justices probably deferred to him because they didn’t want to have anything to do with drafting a decision about subject matter that they had no clue about.

    “Furthermore, Benson has been reaffirmed numbers of times by the Supreme Court.”
    Did they reaffirm the statement that “It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.”?

  8. Mr. Expert (OK, is that better?), I am responding to your position that one cannot manipulate abstract concepts.  I think number systems are abstract.  The number one is abstract.  The number two is abstract.  The addition of one plus one to obtain the number two is an abstract manipulation.

    The fact that the answer is the same every time does not mean that everything about one plus one equals two is not abstract.

  9. There is always more?  

    Okay I'll bite.

    Let me see, here I have a handheld computer.  I want to program it to add 1+1.  Let me see.  Hmmm… I press one.  I press plus.  I press one.  I press =.  Voilà!  I have a new machine.

  10. Purely mental processes are abstract ideas and one of the Court created judicial exceptions.

    There is no Court created judicial exception for business methods

    What about purely mental business methods?

    This has been another edition of Suckie Feats Theater. After a brief intermission, suckie will resume dancing. Act III will include a very special goalpost moving event.

  11. I am not the one claiming that certain kinds of processes are categorically eligible.  Leave that nonsense to the likes of Actual Inventor or anon.

  12. Get over it, "Benson was penned by a decrepit justice who probably never saw a computer. …Douglas was an 72 year old, crackpot.  …BTW — the claims at issue in Benson would also likely sail through any Federal Circuit panel today (no matter who sits on it). Benson is effectively dead – get over it."

    The problem with your thesis was that Benson was a unanimous opinion of the Supreme Court.  Unanimous.  Unanimous!  UNANIMOUS!  Repeat after me, unanimous.

    Furthermore, Benson has been reaffirmed numbers of times by the Supreme Court.

    If as you say that the Federal Circuit would today find patent eligible the claims in Benson, I would tell you that you have a Federal Circuit in open revolt.  While they are entitled to their opinion, they are not entitled to ignore the holdings of the Supreme Court.

  13. The Wares, "You are ignoring the fact that software is equivalent to firmware (which is just software in a specified location) which is equivalent to hardware. …Would you deny a man-made particular component (like a graphics unit) to fully belong to an enumerated class of patent eligible subject matter?"

    Regarding your question, last, no, not at all.  I think components of machines are perfectly patentable.  If one is claiming the component of the machine, however, in some fashion the claim should be limited to the machine just as it was in Alappat. 

    However, as in Alappat, the particular machine was the graphics unit.  A general purpose digital computer is NOT a particular machine.  Thus software is not a component of a particular machine.  But this was the exact bootstrapping argued by Judge Rich in In re Benson.

    The bootstrapping and sophistry of Judge Rich in In re Benson is quite obvious to anyone that has an education above the preschool level.  His bootstrapping was before the Supreme Court in that case.  The Supreme Court held against Judge Rich.  It is about time that that Supreme Court case be accepted.

  14. Anon: “The open question is the second question you posed, which is more accurately stated: “when does a patent claim (which may or may not include software based features)claim an abstract concept and, therefore, be directed to non-patentable subject matter?”

    When the claim does no more that state the concept and say apply it. However when the additional steps of the process integrate the concept into the process as a whole it becomes patentable subject matter. See (Prometheus). Not even deny Ned will deny this, let alone try and rebut it.

  15. Mr. Heller:

    I see you ducked both questions I asked of you, just like you duck performing the “Integration Analysis” on Ultramercial’s claims according to the USPTO OFFicial Guidelines.

    Every time you are confronted with the law, logic, and fact you melt and run like chocolate on a hot Texas sidewalk.

  16. Purely mental processes are abstract ideas and one of the Court created judicial exceptions.

    There is no Court created judicial exception for business methods.

    Case Closed!

  17. I'll bite.

    Name me one, just one, claimed invention that was held to be an eligible process that was not directed to a particular machine or which did not transform an article into a new state or thing.

    Just one.

    We wait.

  18. Okay let’s say it’s 1850, USA, and I walk into the patent office in some dust bowl town of the old west and set a new Macbook Pro from 2012 on the table.
    Do you really think the patent clerk is going to deny it is a machine for even one second? Let alone a “NEW” machine!

    Then let’s say, I turn the thing on to show them how it works. Their eyes pop open, and if they don’t lynch me for being a w-i-t-ch, do you really think they are going to deny the processes are technological?

    And just to totally blow their mind, let’s say I use the built in iCamera to electronically capture their images and display them on the screen. Are they really going to say this is not a transformation?

    Are they really going to say everything I just displayed; the machine, the working software, the camera, the capturing of the image, was all in my imagination and an abstract idea?!?!?!?!?!?

    Like I am sure the Patent commissioner is gonna come in and with a southern drawl accent and say, “This dang contraption doesn’t look like an anvil, a hammer, or even a nail. It ain’t no machine!” And then say, ” that there taking of my photograph ain’t like smelting iron, why heck it is not even as complicated as rotating my tater and corn crops, so it sure ain’t no process! Sir, you best high tail it back to the 21st century cuz you ain’t getting no patent with that abstract cr ap in the 1850′s!”

    Yet this is the type of inane, backwards thinking of those in the 21st century that deny software, computers and systems are statutory subject matter, and/or within the useful arts.

  19. Hello Leo:

    You had asked me to perform Integration Analysis on the Bancroft claims in the other thread. Well, I did read the claims and yes the results could be different if “Integration Analysis” from Diehr, and Prometheus is performed. To understand why, we need to look at the case law history on 101, and integration to see how this type of analysis is performed. Here it is step by step and in relation to Bancroft. Hope this helps.

    Step One. Identify the concept of the invention according to the inventors definition.

    This may be the first mistake made in Bancroft. The panel appears to have “made up” an inventive core concept, as opposed to reading the claims as a whole , and in light of the specification and drawings to identify the concept of the invention. It’s the courts job to apply the law to the claims, not twist the claims to conform to the law. I am not saying that the Bancroft panels “Inventive Core Concept” is not the same as the “concept’ the inventor, invented or intended, I am just saying we will never know in this instance because the Bancroft panel did not identify the concept objectively and according to Court precedent. Of course if the inventors do not actually identify a concept in the specification, and/or write one so poorly and vague that the concept can’t reasonably be discerned and described, then they offer the court little choice but to make up it’s own version of the what the concept is, or even go down a different path and narrow the invention by describing an “inventive core concept”.

    Step Two. Identify the application of the concept according to the claims. This step is relatively easy, as we are looking for a series of steps that require actions to be taken. One or more steps show the concept has been applied.

    Step Three: Integration.

    As Prometheus told us, simply stating a concept and then adding steps is not enough. Prometheus says, that is the equivalent of saying, here is the concept, now apply it. That results in a patent on the concept itself and is not allowed. In order to transform the concept into an inventive application there needs to be something more. And that something more is “integration”. A good starting point for a practical guide to “Integration Analysis” is the new USPTO Guidelines on “Integration”. Here is how it’s done:

    A). To show “integration”, the additional elements or steps must relate to the ( concept ) in a significant way to impose a meaningful limit on the claim scope. The analysis turns on whether the claim has added enough to show a practical application.

    B). Along with “integration”, the additional steps must be sufficient to ensure that the claim amounts to significantly more than the ( concept) itself by including one or more elements or steps that limit the scope of the claim and do more than generally describe the ( concept ) with generalized instructions to “apply it.”

    C). A machine or transformation that is merely nominally, insignificantly, or tangentially related to the steps or elements, would not show integration.

    (e.g., Prometheus passed M o T but failed Integration. Diehr may have also failed M o T, but passed “Integration.” Conclusion? M o T is dead, “Integration Analysis” is key.)

    “Diehrs” claim would pass Inquiries 1-3 in the above analysis as it is a process that includes the Arrhenius equation as a limitation, with additional steps that “integrate” the Arrhenius equation into the process and are sufficient to narrow the scope of the claim so that others are not foreclosed from using the Arrhenius equation in different applications. ( See Office Guidelines, emphasis on Diehr added.)

    And that Leo is how it’s done! Let me know if you have any questions.

  20. There is no such “technical fields” test.

    There is no such “needs promotion” requirement.

    Not yet anyway. BWAAAHAHHAHAHAHAHAHAH!!!!

    Keep p–ss— in the wind, brother.

    Note: I never said there was such a requirement. My point was simply that the absence of patents for g–rb–e of the sort we were discussing will/would have zero effect on the rate or quality of developments in those areas. Zero. Nada. Zilcho.

  21. Again, the site troll trots out his canards:

    There are no such technical fields. There is no need to “promote” change

    There is no such “technical fields” test.

    There is no such “needs promotion” requirement.

  22. “Why must you insist on trolling AI (or 101 Integration Expert)?”

    He knows there is no M o T requirement.

    He knows there is no technology requirement.

    He knows there is no prohibition on business methods.

    Yet he continues to make arguments based on these false premises.

    Why?

    Because Ned is a GD Troll!

  23. Ned,

    Why must you insist on trolling AI (or 101 Integration Expert)?

    You know full well that your post is not correct, that MoT is only a clue, and is neither dispositive, nor sufficient.

    Do you really believe that your post convinces anyone of anything?

  24. MD [PC suggests thatn] an advance in business like, say, hire purchase (when it was new), is not “abstract” and ought to have been eligible for patent protection

    Two different topics. As for the latter, there is no such thing as “progress” in methods of contracting or methods of making money. There are no such technical fields. There is no need to “promote” change or evolution in this area using patents as there is absolutely nothing “there” that warrants government-enabled protection of any kind.

    The only people on earth who clamor for patents on such “developments” are patent trolls and exploiters of the patent system. That’s it. That tells you everything you need to know.

  25. MD Is it “abstract”? I doubt the buyer and seller would see it that way

    Whatever the test for “abstraction” may be, it is surely not whether a party recited in the claim “sees it that way.”

    Consider:

    1. A feeling of horrific fear, wherein said fear is felt by a landlord.

    Would the landlord consider that claim “abstract”?

    It’s a d–b question. It’s the wrong question.

  26. Not inherently a rip off. Just as implemented. The rent to owners generally end up paying 3 times the regular purchase price.

  27. As I understand it, the noteworthy feature of Hire purchase is that you get possession immediately but ownership of the property does not pass till all payments have been made. Conversely, with my mortgage, I got ownership immediately, then paid back the loan over the first 25 years of my ownership. Don’t know about your “Rent to Own” (but it sounds like a leasehold arangement).

    None of these ways of doing business is, inherently, a rip-off as far as I can see. Horses for courses, win-win, no?

  28. FYI – On this side of the pond, in relation to televisions and furniture, we call that “Rent-to-Own” and the process is usually a huge rip-off. The definition also seems to read on the inner workings of a mortgage, though the terminology used is different, the effect is the same. One is called the home owner, but if one misses a few mortgage payments, the lender forecloses and takes the house back, even if the loan is 99 percent repaid. So, it is very much like rent to own or hire purchase.

  29. BTW — the swing vote in any anti-patent ruling at SCOTUS might be Scalia. However, if I was the writing the brief for the side advocating for software as patentable subject matter, I would make sure to point that Benson was drafted by Douglas. As best as I can tell, Scalia and Douglas occupy completely opposite sides of the spectrum on many beliefs — both personal and legal. You probably couldn’t find two more completely different jurists.

    Knock out Benson as precedent and the anti-software side has little to hang their hats on.

  30. Mr. Heller:

    I have told you before I am not Mr. Wheeler.

    Now stop being a disrespectful azz and address me by my name, 101 Integration Expert.

    And there is nothing abstract about 1+1=2. It works very objectively and you get the exact same result every time.

  31. The “preemption” argument in the context of software is also a misunderstanding of software as a medium by characterizing software as an abstract algorithm. If you look at sofware as a medium, preemption in the context of software also goes away.

  32. I thought you once claimed that you had programming experience Ned? Your lies flow freely. How do you “program without more?”

    Programming is not done in a vacuum. Programming is only done to effect some result, thus there is ALWAYS more.

  33.  Because Benson made it very clear, IMHO — very — that simply programming a GP digital computer without more does not produce a new machine.  Period.  End of story.

    Except it wasn’t. A brave and knowledgeable jurist made it a point to snub the dicta laden Benson and lay down real law in the HOLDING of Alappat (which was confirmed as law post-Bilski).

    Your own article on dicta dooms your agenda Ned.

  34. Round and round we go.  If Medical Methods were patent eligible as a category, Prometheus would have been decided that the claim there were eligible as they were directed to Medical Methods.

    Whoops, no wait….

  35. Benson was penned by a decrepit justice who probably never saw a computer before he issued the decision and was the same justice who thought trees could have standing in a dissenting opinion issued the same year Benson came out.

    This is an interesting commentary about Douglas:
    “Douglas did not highly value judicial consistency or stare decisis when deciding cases.”
    Another interesting statement:
    “In general, legal scholars have noted that Douglas’s judicial style was unusual in that he did not attempt to elaborate justifications for his judicial positions on the basis of text, history, or precedent. Instead, Douglas was known for writing short, pithy opinions which relied on philosophical insights, observations about current politics, and literature, as much as more conventional ‘judicial’ sources.”

    Put simply, Douglas was an 72 year old, crackpot at the time Benson was written. It says a lot (about you) that you hold this opinion in such high regard.

    BTW — the claims at issue in Benson would also likely sail through any Federal Circuit panel today (no matter who sits on it). Benson is effectively dead – get over it.

  36. The invention should be defined by the claim itself and not by any core inventive concept for purposes of Section 101 as well as Section 103.

  37. You are ignoring the fact that software is equivalent to firmware (which is just software in a specified location) which is equivalent to hardware.

    A claim to a machine is one thing. Fully belonging to an enumerated class of patent eligible subject matter.

    A claim to components of a machine falls to the same analysis. Would you deny a man-made particular component (like a graphics unit) to fully belong to an enumerated class of patent eligible subject matter?

  38. Ned here is a Link to a dictionary definition of “hire purchase”:

    link to thefreedictionary.com

    When it was new, it was a great British invention.

    Is it “abstract”? I doubt the buyer and seller would see it that way, especially if the buyer fails to keep up the regular payments.

  39. I would suggest that a claim is either to a machine or to a method, not to software. Many innovations in machines or processes have at their heart programming. Thus, an otherwise patentable machine (graphics unit (Alappat)) or process (Diehr)) is not made ineligible because the point of novelty is in software.

    Correspondingly, claims to abstract concepts (financial transactions, for example) are not made eligible simply by reciting the use of a computer.

    Thus stating the issue as to whether software is patentable or not is hardly stating what the real issue in these cases is. Software most often is patentable in context. It is just that abstract ideas, including mathematical algorithms, are not rendered patent eligible simply by reciting the use of a computer to carry them out.

  40. Business methods are processes, and processes are one of the enumerated categories of patent eligible subject matter are they not?

    Therefore business methods are subject to the same conditions and requirements of United States Code Title 35 for Patents, as any other category of patent eligible subject matter.

    Do you deny this?

    And if you do, please provide the proper pin-cite to the legal authority that agrees with you.

    :: Silence::

  41. those who know patent law

    Right. Like those who knew that Promethetheus’ claims were unpatentable but still had to endure your b.s. before and (even more sadly) after you were set straight by the Supreme Court.

    9-0.

    See also Bilski, Nuitjen, Abbott v. Sandoz, Therasense, etc. You loved all those claims, suckie. They are gone now. Sucks to be you. That’s why we call you …

  42. Nice.

    Now Ned slanders strangers to defend his shameful actions.

    Way to sink to new lows Mr. Heller.

  43. Mr. Wheeler, you just said that BMs were patent eligible; and if claims were BMs, they pass 101.

    That is such a load of horse manual that the good residents of Patently-O will have to bring in bulldozers and deodorants by the carload just to deal with it.

  44. Round and round we go.  If BMs were patent eligible as a category, Bilski would have been decided that the claim there were eligible as they were directed to BM.

    False. The HOLDING (remember that word?) was that the individual claims were abstract – quote apart from the category of method they belonged to.

    The agenda is clear alright. It’s Ned’s.

  45. But, unless the process passes the MOT, it most likely will not be eligible

    Here we go again.

  46. Max, I really don't know what a "hire purchase" is.  But, unless the process passes the MOT, it most likely will not be eligible.  I have a strong feeling that "hire purchase" is abstract.

  47. Mr. Wheeler, "Need I remind you that so called business methods, in and of themselves are statutory subject matter. And there is no such thing as an abstract business method."

    Round and round we go.  If BMs were patent eligible as a category, Bilski would have been decided that the claim there were eligible as they were directed to BM.  

    Mr. Wheeler, it is posts like these that unmask your agenda.

  48. anon, a new machine requires that the programmed machine operate differently on the environment in some fashion.  Simply programming a machine to carry out calculations is not enough.  For example, in Alappat, the hypothetical programmed machine could be substituted for the claimed rasterizer hardware, but the hypothetical programmed computer still required its digital output be used to smooth the image displayed on a display.  This end use was critical to the court's holding.  End use was also the sine qua non in Benson.  Without it, the programmed machine is simply calculating data.  Data in, data out.

    When people say the issue of patenting software remains an open issue (meaning sore) illustrates that the person has an agenda.  Why?  Because Benson made it very clear, IMHO — very — that simply programming a GP digital computer without more does not produce a new machine.  Period.  End of story.  And that case was decided nearly 40 years ago.  The issue remains alive because the pro-software patents type simply will not give up, and they have allies on the Federal Circuit.

  49. No need to pretend. It’s a classic fail by attempting to appeal to something well understood by those who know patent law to fall outside of the printed matter doctrine and it’s exceptions with an attempted conflation with music, something outside of the useful arts.

    Of historical note, it’s a topic that Noise Above Law absolutely owned you on.

    As I said: no pretending necessary.

  50. uld you agree that there is a difference in using a machine already programmed and programming a machine such that the newly programmed machine is capable of doing something that it could not do without the programming?

    Would you agree there is a difference in turning on a CD player with a CD already in it, and putting a new CD in the CD player?

    Deep thoughts from Anonsuckie. Really deep.

  51. “If the claim recites a computer, then it meets MOT and that should go a long way to showing it is in the category of things patentable.”

    It does go a long way Les. It goes a long way towards showing that it in fact falls short of being in the category of things patent eligible.

  52. Dennis Couch: “Both decisions agree on several main points: that the mere inclusion of a computer limitation does not make a claim patent eligible.”

    This first point seems to overlook the fact that a claim is already presumed valid before, and irregardless of any computer limitation being considered.

    Uh … the point is that ineligible claims are not supposed to be the subject of patent grants in the first place.

    Man, this blog has the d—best trolls.

  53. Such a person seriously misunderstands the basic premise of patents

    LOL.

    Remember when su ckie thought you get a patent on a method of thinking a new thought by tossing in some old conventional patent-eligible limitations before the thinking step?

    I do.

    9-0.

  54. yep. You don’t abandon cases on 101 issues. On the other hand, if the examiner brings up a serious prior art problem….

  55. What is a manual process? Is recognizing speech manual?

    If I’m the first to automate speech recognition and couple it with a translator to make the first universal translator, is the method I come up with to do that worthy of a patent?

  56. “It is simply ridiculous that after 40 years of debate, we still do not have an answer to the simple question of whether (or when) software is patentable.”

    Its actually ridiculous that it is even a question. Methods are patentable. If software is claimed as a method, it is patentable.

    It is only our system wherein one bad decision forms the basis of all decisions that follow that has us trapped in the morass.

    Someone needs to overturn the mental steps decision.

    Someone needs to overturn the decision about BCD.

    And someone needs to overturn which ever decision lead to the conclusion outlined in the article that the form of the claim doesn’t matter. If the claim recites a computer, then it meets MOT and that should go a long way to showing it is in the category of things patentable.

    102 and 103 are of course other issues.

  57. Ned Heller misrepresents law and when busted and an apology is demanded, turns around and misrepresents the post demanding that Ned Heller apologize.

    From the ethics thread: “How about an article on the ethics of legal blogging: purposefully misrepresenting law and others’ views and statements on law?

    Obviously, Mr. Heller believes it is perfectly OK to act “unethically” on a legal blog and at the very least, this is an audacious display of a lack of integrity.

  58. And I thought the shilling sound was a bit different.

    Must be a Euro-shill thing.

  59. Of course it would.

    Why would a shiller let anything get in the way of shilling?

  60. If I understand Paul Cole aright, he is suggesting that an advance in business like, say, hire purchase (when it was new), is not “abstract” and ought to have been eligible for patent protection. The notion of “hire purchase” isn’t eligible under the EPC. For you, Ned, is it eligible? How about Judge Scalia?

  61. “The essence of the claim is not to the specific way of programming a computer, but the abstract business method itself. Such is not patentable subject matter.”

    Mr. Heller:

    Need I remind you that so called business methods, in and of themselves are statutory subject matter. And there is no such thing as an abstract business method. Do try and be honest in your posting.

  62. “It is a sad day as Ned’s intellectual dishonesty resurfaces.”

    Just like I said it would.

  63. I disagree that you can manipulate an abstract concept. Apparently you have no clue as to what I am talking about.

  64. FYI 6, Patent Docs has guest post from Hal Wegner on Preemption.

    Not quite to your flavor, but you might find it interesting.

  65. There was a big list of cases that pretty much followed that format, or where interpreted into that format, that went to the board for annihilation.

  66. “But, why require a particular implementation medium in an independent claim?”

    Because otherwise your claim is offered for sacrifice upon the alter of preemption.

  67. Ned would you agree that there is a difference in using a machine already programmed and programming a machine such that the newly programmed machine is capable of doing something that it could not do without the programming?

    (ps, Anon and I are not the same person).

  68. Anon, this is one of the best posts you ever made on this topic.

    You seem to clearly recognize that people can masquerade a claim to an abstract concept by reciting the use of conventional elements in the conduct of carrying out the abstract concept. Such claims are not really directed to new computer technology. They are not directed to programming, as any general purpose digital computer programmed in any fashion will suffice. There claims are rather directed to the Abstract method itself.

    Research into new computers and new computer technology have nothing to do with this debate. Claims to such subject matter are almost always patentable as new machines without more. Moreover, even if the machines are improved by new software, such claims are typically easily identified as improvements to machines. I have in mind, for example, it approved disk drive that is improved by providing a new algorithm to control the actuator such that it reduces noise. The programmed disk drive clearly is an improved disk drive.

    In contrast, a machine programmed to calculate binary to decimal conversion simply calculates the number and does not change, improve or modify the computer or any associated apparatus or process.

    Thus it is not true that software always creates a new machine. In context, software that is used to modify the operation of a machine creates a new machine. In context, software that is used in a process that is otherwise eligible, creates a patent eligible process. In context, software that implements physical steps in the real world in a specific time sequence for example, creates a particular machine, or a physical process that may otherwise be patentable subject matter. This latter example course is the CLS Bank case.

    I’ve always thought the most difficult cases involved algorithms that compressed data, encrypted data, otherwise manipulated data such that they could be stored on physical media or transmitted in a compact form, encrypted form, or otherwise. These claims work on data, which is otherwise abstract. How to claim them properly is a major problem in my view.

  69. Max, “in an entirely obvious way…”

    This is equivalent, in my opinion, the simply reciting the use of a general purpose digital computer to implement the abstract concept. I fully agree that such claimed subject matter is not directed to software, improved computer technology, or anything of that ilk. Rather the claim is to the abstract concept itself. The case is all consistent with this notion.

    In contrast, if specific computer implementation is required by the claims, such as we saw in CLS Bank v. Alice Corporation, then the claims may well be patent eligible because they are directed to particular machines.

    The problem we have are people who do not seem to understand the distinction between merely reciting the use of a general purpose digital computer to implement an abstract idea, on the one hand, and particular machines on the other. There is a difference and the difference is clear.

  70. If you find the difference between the technical arts and thre Useful Arts boring, why do you keep coming back to the subject?

  71. Even if the particular claims in Ultramercial are ultimately found to be directed to an abstract idea, that in no way means that software claims in general are abstract. The particular claims in Ultramercial at issue are close to the line (or even over the line). It is just an example of the the small percentage of software patents that close to the abstract idea.

  72. The open question is the second question you posed, which is more accurately stated: “when does a patent claim (which may or may not include software based features)claim an abstract concept and, therefore, be directed to non-patentable subject matter?” The percentage of software claims that are likely to be abstract under any test described by the courts is small. Many examiners still require the word “non-transitory” in front of computer readable storage medium claims, which results in a lot of 101 rejections. However, that would not likely be a problem in court or even at the BPAI (See, Ex Parte Hu, No. 2010-000151 (B.P.A.I. Feb. 8, 2012)). Moreover, even if such rejections are valid under current law, the path to overcoming such rejections is very clear. Despite the apparent belief by many on this blog that software is somehow unpatentable, that belief is inconsistent with current case law, with the patent statutes, and with the large number of patents issued on software related patents. There is a small percentage of patents and patent applications that possibly fall into the abstract idea exception. This area is still nebulous, and there may never be a bright line test.

  73. Anon writes:

    “Far from abstract, advances in computer technology—both hardware and software—drive innovation in every area of scientific and technical endeavor.”

    I would imagine most Europeans would agree.

    I’m sceptical though, that the mere act of programming a conventional general purpose computer, in an entirely obvious way, to implement a new and not obvious financial hedging idea, is enough to bring about an “advance” in “computer technology”. The only “advance” available, to support the grant of a patent, is the one in the hedging arts, right?

  74. I think the different results between CLS Bank v. Alice Corp., and BanCorp can be explained simply by observing that Alice involved storing transactions in a definite time sequence while Bancorp simply used a general purpose digital computer the performance calculations.

    In the case of Alice, the use of computer storage was specific primarily because of the time sequence required. This made a general purpose digital computer into what we call a particular machine. Such as patentable subject matter.

    In the case of Bancorp, the computer again is simply recited perform the calculations. The essence of the claim is not to the specific way of programming a computer, but the abstract business method itself. Such is not patentable subject matter.

  75. The Fed Cir has already answered the question you pose, Mr. Crouch, in Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323 (Fed. Cir. 2011):

    In this context, this court examines as well the contention that the software programming necessary to facilitate the invention deserves no patent protection or amounts to abstract subject matter or, in the confusing terminology of machines and physical transformations, fails to satisfy the “particular machine” requirement. This court confronted that contention nearly two decades ago in the en banc case of In re Alappat, 33 F.3d 1526 [31 USPQ2d 1545] (Fed. Cir. 1994). At that time, this court observed that “programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.” Id. at 1545. As computer scientists understand:

    the inventor can describe the invention in terms of a dedicated circuit or a process that emulates that circuit. Indeed, the line of demarcation between a dedicated circuit and a computer algorithm accomplishing the identical task is frequently blurred and is becoming increasingly so as the technology develops. In this field, a software process is often interchangeable with a hardware circuit.

    Id. at 1583 (J. Rader, concurring). In other words, a programmed computer contains circuitry unique to that computer. That “new machine” could be claimed in terms of a complex array of hardware circuits, or more efficiently, in terms of the programming that facilitates a unique function. The digital computer may be considered by some the greatest invention of the twentieth century, and both this court and the Patent Office have long acknowledged that “improvements thereof” through interchangeable software or hardware enhancements deserve patent protection. Far from abstract, advances in computer technology—both hardware and software—drive innovation in every area of scientific and technical endeavor.

  76. This question regarding the patent-eligibility of software has come up often enough that some future limitation on software patents seems inevitable. Maybe the solution is to simply allow them a shorter term, rather than eliminating them altogether?

  77. Mr. 101 to Mr. Heller:
    You do realize that "manipulating an abstract concept" is in itself an "abstract concept" and thus has no objective applicability to the law?

    Yes.
     
    I thought you disagreed.  But it is good to know that you do not.

  78. MaxDrei and his “I’m here to learn” and his “mind open to understanding” pwned.

  79. The myth of software as technology was revealed here… no need to provide code for computer-implemented inventions because any ordinary programmer can figure it out… let the USPTO focus on inventions made by people who aren’t sitting on the t—–t all day coming up with “inventions” for which patents are completely unnecessary to promote.

    This sounds like a mad raving from someone who believes in a sweat-of-the-mind, patents-are-for-the-elite-only ideology. It is as if MM truly believes that “any ordinary programmer” is less of a person than someone who works in the biotechnology arena, or for some reason patents need a “flash of genius” or some other “minimum” schooling level of the inventor to be awarded.

    Such a person seriously misunderstands the basic premise of patents and such rantings are dangerous in their attempted perpetration of such false elitism.

  80. the people pushing the patenting of… business methods do not accept the answer given us by the SC

    It is a sad day as Ned’s intellectual dishonesty resurfaces.

    It is a sad day for Ned as Ned’s intellectual dishonesty does not slide by unnoticed.

    Brought to shame in his own light of holding and dicta discussion (the fact that his crusade was based on mistated dicta by being shown what the actual holding of Bilski), Ned was thought to have been forced to end his crusade against business methods because “the answer given us by the SC” was clearly shown not to be the answer Ned was peddling.

    Now we see Ned peddling a trick he learned from Malcolm; waiting a period of time and trying to re-peddle a position that was shown to be intellectually (and ethically) bankrupt.

    Ned Heller, you have shown that you have no conscience or integrity in trying to not only resurrect your crusade, but to do so by sneaking it into a thread that does not involve business methods per se and on top of that claiming that others are surreptitiously “pushing” something that would violate what the Supreme Court has said (when it is clear that the Supreme Court has said no such thing as you advocate so zealously).

    An apology from you at a minimum is required. Your actions offend every honest person that attempts to understand and follow the law.

  81. “Bad, I might add that manipulating an abstract concept is not made patentable by reciting a general purpose computer.”

    Mr. Heller:

    You do realize that “manipulating an abstract concept” is in itself an “abstract concept” and thus has no objective applicability to the law?

    “I agree with 6 as well, that the problem is that the people pushing the patenting of software per se and business methods do not accept the answer given us by the SC.”

    What answer would that be Mr. Heller? Last I checked the Supreme Court has said that concept, application, and integration, are the keys to processes that are 101 statutory subject matter.

    You seem to be the one that is pushing the agenda that business methods and software should not be included in processes. But I do believe the Court has already spoken on that as well. See : (Bilski, Alappat, and Diehr.)

  82. Core Inventive Concept Vs. Inventive Application of a Concept.

    That’s the fork in the road.

    One takes you down a subjective path that leads to division, confusion, and violations of the law.

    The other takes you down a path of certainty, objectivity, and integration.

    I choose the path that leads to integration.

    And in doing so I choose our constitution, the statute, congressional intent, and the American way!

  83. Dennis Couch: “Despite this attempted reconciliation, it is clear that the CLS majority has a different approach to subject matter eligibility questions. ”

    The CAFC has a prime opportunity to heal the fracture by applying “Integration Analysis” from Prometheus to Ultramercial’s claims.”

    In Prometheus, integration was made explicit with the Court using “integration” as the key in it’s analysis. See (Prometheus referencing Diehr) :

    ” In Diehr, the overall process was patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole. These additional steps transformed the process into an inventive application of the formula.” ( Emphasis Added)

    The recent panels have been shy about explicitly applying “integration” since Prometheus was about a Law of Nature exception and did not specifically address business methods and systems claims. However the door has been opened by the Court with the grant, vacate, and remand of Ultramercial’s claims in view of Prometheus. The USPTO has already issued new guidelines that provide preliminary instructions for integration Analysis. Rader, or which ever panel gets this case must show leadership, and seize the day by taking the bold and correct action of applying “Integration Analysis” to determine the eligibility of Ultramercial’s claims.

    Indeed, the CAFC must take up and champion Prometheus’s “integration” After all “integration” is the antithesis of dissection. You cannot have an end result that is both integrated and dissected at the same time. Integration is inherently part of the analysis of patent claims. This was implicitly brought to light in Diehr, when the Supreme Court expressly ruled against dissecting claims, and mandated it’s claims as a whole approach. See ( Diamond v. Diehr ). Integration analysis is the key to reconciling all the Courts precedents and providing must needed stability on the issue of 101 statutory subject matter.

  84. Dennis Couch: “Both decisions agree on several main points: that the mere inclusion of a computer limitation does not make a claim patent eligible.”

    This first point seems to overlook the fact that a claim is already presumed valid before, and irregardless of any computer limitation being considered.

    See, ( 35 U.S.C. 282 Presumption of validity; defenses. – A patent shall be presumed valid. Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim….)

    Thus, the first and correct point to be considered should state: The inclusion of a computer limitation does not make a claim ineligible.

    Next the court needs to show deference to the actual inventor as “the” expert of the invention and therefore reply on the claims to define the invention.

    Finally instead of subjectively looking for a core inventive concept, the court should follow Prometheus “Integration Analysis” and look for a concept that has been applied and then integrated.

    From this point the court will understand that once the concept is “integrated” the process legally transforms into an “inventive” application of the concept and thus by law can’t be an abstract process. See (Prometheus referencing Diehr’s claims)

    ” In Diehr, the overall process was patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole. These additional steps transformed the process into an inventive application of the formula.” ( Emphasis added)

  85. In spite of your rambling, the answer is easy. If you understand the art, you know my answer to be true.

    Software is equivalent to firmware is equivalent to hardware.

  86. I have yet to run into the patent application where the first few claims read as follows:

    (… and until we do, it is silly to hypothesize on whether the stuff is patentable.)

    WHAT IS CLAIMED IS:

    1. Software.

    2. The software of claim 1 where said software is software per se.

    3. The software of claim 1 and embodied within a particular machine.

    4. The software of claim 1 and configure to implement a significant pre- or post-solution activity.

    And of course I would like to see the spec of that patent application to learn more about how the applicant, as lexicographer, defines this “software” thing.

  87. The answer is not simple.

    We all make noises at each other:

    “software”
    “computer”
    “abstract”
    “truly inventive”
    “troll”
    etc., etc.

    What those noises do inside your head or the next person’s head, I do not know.

    I suspect that we each have a different point of view depending on which appendage on the elephant we blind gropers (for the “truth”) find ourselves grasping at.

  88. You can. But, why require a particular implementation medium in an independent claim? That is akin to forcing someone to claim an invention “[X], wherein [X] is made of wood” when the invention [X] can be made from wood, metal, synthetics, etc. Why force an invention to be a circuit when the circuit is simply a particular implementation, and the invention can be implemented as a circuit, software in conjunction with a computer, etc.? The answer to your question therefore illustrates the false dichtomy.

  89. Just curious, but rule 96 is a permissive rule (applicant may submit). How exactly were you going to require this?

    The code probably wouldn’t appear in the claims

    Really? Have you even read rule 96?

    Please stop trolling.

  90. I’ve pondered requiring applicants to provide a code listing to prove that they actually “invented” the claimed software. The code probably wouldn’t appear in the claims since these days it is long enough to fill at least a CD, but they can send that in per rule 96.

  91. “The myth of software as technology was revealed here in these comments years ago by one of the sockpuppets: there is no need to provide code for computer-implemented inventions because any ordinary programmer can figure it out.”

    Several years later and a basic aspect of patents and patent law still eludes you. The difficulty in implementing an invention means little to patentability. If I claim “a widget having a hole,” there may be a hundred known ways to make a widget and a hundred known ways of making a hole, but it doesn’t matter.

    First paragraph on 35 USC 112: “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

    “I just got an email from Facecrook informing me that a forgotten douche from my high school that I never wanted to see again just ‘checked in’ to an Ace Hardware in Tacoma.”
    Not that I use Facebook, but to the extent that you do cannot even use the correct terminology is a very good indicator that this technology called “software” is far beyond your ability to comprehend.

  92. The USPTO doesn’t want to deal with this mess?

    “Avoiding issues under § 101 can have a very positive effect on pendency and help examiners focus on finding the closest prior art, leading to strong patent protection”

    link to uspto.gov

  93. Otherwise the claims should be deemed insufficiently technical for granting.

    Did you miss the day they announced that there is no technical arts requirement? Did you also forget that claims need only be understood by a person having ordinary skill in the art? Have you not yet read the Antor Media Corp case that goes into presumption of enablement for those having ordinary skill? Bottom drops out? Quite the opposite, as that which is required goes both ways. Do you need someone to read the case to you? To help you understand the big words? the big concepts?

    patents are completely unnecessary to promote.

    Back to that canard? Did you forget that “necessary” is nowhere found in the constitution? Do you enjoy making things up whole cloth?

    Are you a patent attorney whose practice relies on peddling that sort of c—-?< ?i>”

    Come back and ask after Myriad is found to be attempting to patent a product of nature (or not). Either way, the decision will point out that those who rely on peddling that sort of c—- will be out of luck.

    that a forgotten douche from my high school that I never wanted to see again just “checked in” to an Ace Hardware in Tacoma

    Actually that is helpful, Now I can avoid going to that hardware store and running into you.

  94. Paul Cole: the problems of computer-implementation (if such problems can be found or foreseen) must be identified and solutions disclosed in the specification and covered by the claims.

    I would go further and require that the solution appear in the claims. Otherwise the claims should be deemed insufficiently technical for granting.

    The myth of software as technology was revealed here in these comments years ago by one of the sockpuppets: there is no need to provide code for computer-implemented inventions because any ordinary programmer can figure it out.

    Once that fact is recognized, the bottom drops out of the entire enterprise. Computers process information and control stuff, just like people, except faster and with greater accuracy. To the extent that computer-implemented “inventions” are distinguished from meat-space art and prior computer-implemented art merely by the type of information being processed or the trivial details of storing and/or retrieving information and/or outputting information (e.g., on the basis of a “single click” or a “swipe” or some such b—-s—-), those claims are pure unadulterated g—-ge. Good riddance to them all. It can’t happen soon enough.

    Are you a patent attorney whose practice relies on peddling that sort of c—-? Man, that’s too bad. Please get a real job and let the USPTO focus on inventions made by people who aren’t sitting on the t—–t all day coming up with “inventions” for which patents are completely unnecessary to promote.

    Now if you’ll excuse me, I just got an email from Facecrook informing me that a forgotten douche from my high school that I never wanted to see again just “checked in” to an Ace Hardware in Tacoma. So awesome.

  95. What is the definition of technical?

    “It’s impossible to define the term. You win.”

    This has been another episode in Patent Troll Fantasy Argument Theatre.

  96. It is simply ridiculous that after 40 years of debate, we still do not have an answer to the simple question of whether (or when) software is patentable.

    Oh, we have the answer all right.

    It’s just that the Federal Circuit isn’t quite ready to listen to the enormous whining and howling from the exploiters/abusers whose lifestyles depend on the continued granting of computer-implemented h—-sh– claims.

  97. The correct question is ‘What’s software?’

    The answer to that question is easy: software is equivalent to firmware (which is only software in a controlled location) is equivalent to hardware.

    All and each of these are components to a man-created manufacture. Chief Judge Rader in his leading opinion on the subject said no less.

  98. “Every invention implemented in software can be implemented in circuits with NO software.”

    So then, claim those circuits?

  99. “The problem resides in the historical problem of viewing software as something other than simply a medium of implementing an invention.”

    That’s not a problem brother, that is a feature.

  100. What’s the classic phrase, MaxDrei, “Tie your running shoes and hike up your skirt” ?

    I ask you to have a mind open to learning on a topic that you fear to tread into and you decide the topic is “boring.”

    It’s too bad that you find pushing through your self-imposed limits to be “boring.” It’s too bad that you do not have a mind open to learning. It’s going to be very difficult for you to actually learn anything that way, with your eyes clenched tightly.

  101. What is the definition of technical?

    Or without engaging in circularity, what is the definition of technological?

  102. In the end, I bet that, at the edge, there won’t be any substantial difference between what arts are “useful” and what problems are “technical”.

    Regardless how “close” the vote was in Bilski, the Supreme Court did reject the Stevens view.

    Hedging (pun intended) your view that there is no difference on a “close” contest is not acceptable.

    There is without a doubt a difference, so your view that in the end there is no difference cannot be correct.

    In plain terms, your response is akin to closing your eyes and pretending there is no difference.

    There is.

    I am asking you to accept that there is in fact a difference and to explore that difference. You say often that you are here to learn and have a a mind open and willing to learn.

    Time to prove it.

  103. Chambers is 100% correct.

    Hardware is equivalent to firmware (which is just software in a particular location) is equivalent to software.

  104. Not too subtle, USF. I realised what you wanted but I struggle to offer something useful. It is said that at SCOTUS there was one flip vote in Bilski, that broke a 4:4 tie. It is that close, I suspect, whether “useful arts” encompasses anything more than “all fields of technology”.

    Suppose (just for the sake of running a thought experiment) you were to put the SCOTUS team, together with the members of the Enlarged Board of Appeal of the EPO, into a sealed jury room and require them to reach a verdict, what the difference is, between “useful arts” and “technology”. I’m convinced that there would be more disagreement between individual members of each one team than there would be between the aggregate view of “Team USA” and that of “Team EPO”.

    Everybody knows how close it was in Bilski. I imagine every judge in the USA takes that into account, when assessing marginal subject matter. Meanwhile, the consummate skills of drafters and prosecutors delivers “creep” that gets ever more marginal subject matter through to issue at the EPO. In the end, I bet that, at the edge, there won’t be any substantial difference between what arts are “useful” and what problems are “technical”.

  105. The problem resides in the historical problem of viewing software as something other than simply a medium of implementing an invention. Every invention implemented in software can be implemented in circuits with NO software. One could reduce represent every circuit with a flow chart just as with software. Judge Rader in Ultramercial was correct in his analysis. Too bad the Supreme Court decided to perpuate the false dichotomy between software and other types of ‘hardware’ implemented inventions. Thus, in my opinion, ‘software’ is just a preferred embodiment, and for a 101 analysis the particular preferred implementation should be irrelevant.

  106. Bad, I might add that manipulating an abstract concept is not made patentable by reciting a general purpose computer.

    I agree with 6 as well, that the problem is that the people pushing the patenting of software per se and business methods do not accept the answer given us by the SC. The people I refer to inlcude some to of FC judges.

  107. Perhaps I was too subtle MaxDrei.

    I was hoping more for your view on the delta between technical and useful that US law allows, rather than your attachment to the abstract line.

  108. Thanks, Max. Yes, I also had in mind the “technical features” issue as well. My (limited) understanding of the EPC is that if the claim doesn’t describe a solution to a technical problem, then you don’t have an invention at all. (T 64/100) It seems to me that the EPO’s patentable subject matter and inventiveness inquiries are intertwined, and I suspect you are right with your guess as to the ultimate outcome at the EPO for these 3 cases.

  109. Leo, none of my clients needs my advice on eligibility of business methods and software so I hesitate to opine on individual cases because I lack the experience needed to opine confidently. Instant reaction however is that the EPO would have no difficulty with eligibility of any claim directed to a computer-implemented method. So all three cases would easily pass the EPO’s eligibility test.

    However (and it’s a big however) the non-obviousness enquiry at the EPO is confined to the sort of non-obviousness of technical means to solve a problem which is itself a “technical” one. Thus, Research Corp’s claims would have a chance to get through to issue today, but the claims in the other two cases likely not.

    Paul Cole’s remarks are interesting though. If “technical” corresponds to the appliance of science, and if there can be “science” in accountancy and sociology (And why not? Think E.O. Wilson and consilience), well then over time the EPO might be able to expand its notion of “technical”, to cover inventions like, in Paul’s example, the notion of “hire purchase”. If that happens, you never know, perhaps Europe will end up more liberal than the USA, on patenting business methods.

  110. How do I feel? As of now, I am having a hard time understanding when subject matter ceases to be “abstract” and starts to be eligible. Seems to me it all depends on the skill of the claim drafter. Once I have a sense of that line, I could offer further thoughts.

    BTW I like your coupling, of “manifestly” and “abstract”. Did you coin it, or is it in one or other of the cases under discussion. I ask because I’m wondering whether something “abstract” can also be “manifest”. To me, one is the antonym of the other. So, is not “manifestly abstract” an oxymoron?

  111. Max, I don’t think you’ve read the Bancorp Services opinion. You probably should: link to cafc.uscourts.gov .

    There’s an interesting discussion regarding “technological advances” starting at page 18; see especially pp. 21-22.

    I’m interested to hear whether you think the EPO would reach the same conclusion on the three cases contrasted here – CLS, Bancorp Services, Research Corp. I think I know the answer, but I want to hear yours first.

  112. MaxDrei,

    How do you feel about the US Useful Arts? Our courts have repeatedly affirmed ther he US patent laws are not constrained to technology (“there is no technological arts test“, Lundgren, I think)? Where to draw the line that is more than technological but less than manifestly abstract is a different question than where to draw the line between what is technological and abstract.

  113. Paul, your “What can be done now, that could not have been done before the invention” I find interesting. Do you see in it any fit with “technology” (as opposed to “science”)? Plenty of people will tell us that the study of things sociological is “science”, that TRIPS contemplates patents in ALL fields of “technology”, and that technology is the application of science to the real world. So technology is less “abstract” than science or mathematics.

  114. All? Are you saying that 1) 101 is completely superfluous, 2) the question, what is the underlying “invention”, makes no difference to eligibility, and 3) a skilled drafter can get a patent on absolutely any clever new thought (idea)?

  115. The last 40 years tell the story that software is patentable and non-patentable! It all boils down to how well the patent is drafted and how well the applicant replies to the rejections and arguments from the examiner.

  116. I have said in a previous posting that there is no reason why an invention is the social sciences should not be as useful and valuable as an invention in physical or chemical science or engineering. Many inventions that underpin the way our society functions are to be found in social science e.g. in the 19th and 20th century the institution of hire-purchase.

    But the key point, I think, is that there should be an innovation. What can be done with this invention that could not be done before? If it is possible to give a good answer to that question, then I am in favor of the applicant/patentee.

    However, we have to live in the real world. Business methods are apt to be dismissed as abstract ideas unless computer-implemented and the computer plays a significant part in the implementation. So we have been warned. In cases of this type it is not enough to describe the business method: the problems of computer-implementation (if such problems can be found or foreseen) must be identified and solutions disclosed in the specification and covered by the claims. The profession has been told what to look for, and those who ignore the judicial advice do so at their and their clients’ peril.

  117. I have said in a previous posting that there is no reason why an invention is the social sciences should not be as useful and valuable as an invention in physical or chemical science or engineering. Many inventions that underpin the way our society functions are to be found in social science e.g. in the 19th and 20th century the institution of hire-purchase.

    But the key point, I think, is that there should be an innovation. What can be done with this invention that could not be done before? If it is possible to give a good answer to that question, then I am in favor of the applicant/patentee.

    However, we have to live in the real world. Business methods are apt to be dismissed as abstract ideas unless computer-implemented and the computer plays a significant part in the implementation. So we have been warned. In cases of this type it is not enough to describe the business method: the problems of computer-implementation (if such problems can be found or foreseen) must be identified and solutions disclosed in the specification and covered by the claims. The profession has been told what to look for, and those who ignore the judicial advice do so at their and their clients’ peril.

  118. I have said in a previous posting that there is no reason why an invention is the social sciences should not be as useful and valuable as an invention in physical or chemical science or engineering. Many inventions that underpin the way our society functions are to be found in social science e.g. in the 19th and 20th century the institution of hire-purchase.

    But the key point, I think, is that there should be an innovation. What can be done with this invention that could not be done before? If it is possible to give a good answer to that question, then I am in favor of the applicant/patentee.

    However, we have to live in the real world. Business methods are apt to be dismissed as abstract ideas unless computer-implemented and the computer plays a significant part in the implementation. So we have been warned. In cases of this type it is not enough to describe the business method: the problems of computer-implementation (if such problems can be found or foreseen) must be identified and solutions disclosed in the specification and covered by the claims. The profession has been told what to look for, and those who ignore the judicial advice do so at their and their clients’ peril.

  119. My take: it is NOT ridiculous that you don’t yet have the answer, where to draw the line, on software inventions. It is a hard line to draw. It requires patient, thoughtful and calm debating, taking every factor into account. When they wrote the EPC in 1973 they addressed it explicitly, and thought they had found the line. Nearly 40 years later, and with the EPO Boards of Appeal churning out more than a thousand cases a year, on claims drafted with all the sophistication the patent attorney profession can muster, the consensus is firming up nicely.

    The more important issue is obviousness, because it is decisive in all technical fields. So everybody involved in innovation cares about that. Some residual fuzziness at the edge of eligibility/patentability of software inventions is less disruptive to the overall health of a patent system. Whether bankers and accountants get patents for their inventions, you know, perhaps I’m not as bothered about it as I ought to be.

  120. “It is simply ridiculous that after 40 years of debate, we still do not have an answer to the simple question of whether (or when) software is patentable.”

    We do have that answer D. Software patent attorneylols just don’t like that answer. And look on the bright side, we’ve got ultramercial and possibly some others going on up to the supremes. That will help simmer them down some over in the softwarelol arts.

  121. But if automating a manual process is done in a non-obvious way, why shouldn’t it be patentable?

  122. Do you think maybe the wrong question is being asked?

    Patentable or patent eligible? Dennis, did you ask the right question? Do you understand that there is a difference?

  123. or a computer readable storage media having computer executable instructions stored thereon, said computer executable instructions operable to perform the steps of…

  124. 1962. Hard to complain

    Kind of sad actually.

    What happens when something really innovative comes along that the Office is clueless about and has no well establsihed bank of prior art?

  125. “It is simply ridiculous that after 40 years of debate, we still do not have an answer to the simple question of whether (or when) software is patentable.”

    Software per se is not patentable. What is patentable are novel, non-obvious and useful machines that use software, and methods that can be implemented with software.

  126. Knuth started writing the Art of Computer Programming in 1962. Hard to complain about the federal courts not keeping up with software when Prof. Knuth is only about halfway through to Volume 7.

  127. The ridiculousness is square peg/round hole.

    They’re using the wrong tool.

    1. Automating a manual process does not make it patentable
    2. 102/103 are still good law

    If it’s not banned by statute, then it’s patentable. It’s not banned, so it’s patentable. Some people just have a hard time grasping that fact.

  128. It is simply ridiculous that after 40 years of debate, we still do not have an answer to the simple question of whether (or when) software is patentable.

    Dennis, do you think either CLS or Bancorp was incorrectly decided?

  129. It is simply ridiculous that after 40 years of debate, we still do not have an answer to the simple question of whether (or when) software is patentable.

    I agree.

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