I checked my Google Alert on "software patents" yesterday, only to find headlines such as "Court Greatly Limits Software and Business Method Patents" and "Federal Circuit Decides Software No Longer Patentable." These and other articles were referring to the
long-awaited decision handed down by the U.S. Court of Appeals for the Federal Circuit (CAFC) in the case of
In re Bilski.
Those who interpret
Bilski to render software unpatentable must have read a different opinion than I did. Does the following sound like a court that has decided that software is not patentable?
- "[A]lthough invited to do so by several amici, we decline to adopt a broad exclusion over software or any other such category of subject matter beyond the exclusion of claims drawn to fundamental principles set forth by the Supreme Court."
- "[T]the process claim at issue in this appeal is not, in any event, a software claim. Thus, the facts here would be largely unhelpful in illuminating the distinctions between those software claims that are patent-eligible and those that are not."
The
Bilski case did not involve a software patent claim. Instead, the case involved a claim (for a method for "managing the consumption risk costs of a commodity") which did
not specify that a computer or other machine performed the method. Therefore, the primary issue before the CAFC was whether such a claim could qualify as patentable subject matter. The CAFC concluded that it could not because the subject matter of the claim was not "tied to a particular machine" or "transform a particular article into a different state or thing."
There is substantial precedent from both the CAFC and the U.S. Supreme Court which is consistent with the conclusion that a wide variety of software patent claims satisfy this "machine or transformation" test. That is not to say that all software patent claims qualify as patentable subject matter or that the
Bilski opinion will not be interpreted within the CAFC, in the district courts, or within the U.S. Patent and Trademark Office to modify the standard of patentability for software. Such changes, however, will likely be subtle and play out over time in a wide variety of cases, despite what recent press reports to the contrary would lead you to believe.
