Software Freedom Law Center

July 16, 2010 by Michael A. Spiegel

Software Patents Post Bilski: A Look Ahead

In the haze of confusion surrounding the Supreme Court’s recent decision in Bilski v. Kappos, the appeals board of the United States Patent and Trademark Office issued a ruling last week that takes a definitive stand against the worst kinds of patents that threaten software developers every day.

Despite the Court's failure to provide much guidance or adopt a bright-line test for patentable subject matter in Bilski, the appeals board ruling in Ex parte Proudler is a sign of the growing skepticism towards software patents that continually test the boundary between acceptable technological innovation and impermissible abstraction. In Proudler, the Board rejected a number of claims to a software invention, citing Bilski in its reasoning.

This rejection is particularly noteworthy as it dispenses with a number of fig leaves that patent attorneys have been using for years to make software inventions seem less like abstract ideas, and therefore patentable. While the USPTO has always held that software is unpatentable, patent attorneys were usually able to get software patents granted by adding such seemingly magical phrases as “a computer readable medium containing computer executable instructions” to a series of data processing steps, thus transforming software into a patentable physical component of a computer.

Taking a page from the same playbook, the Proudler application claims a “method of controlling processing of data in a computer apparatus” and a “computer program stored on computer readable media for instructing a programmable computer to implement a method of controlling the processing of data.” Since the Federal Circuit’s infamous 1998 State Street decision which opened the floodgates to software and business method patents, such claims have been deemed patentable without question. Although the Board could have justified the July 7th decision on other grounds, it took particular pains to reject the Proudler application for claiming unpatentable software. “A claim that recites no more than software, logic or a data structure (i.e., an abstraction) does not fall within any statutory category,” the Board said in its rejection. In its rejection, the Board cited both recent Supreme Court cases (including Bilski) as well as pre-State Street decisions from the Federal Circuit.

I believe the Board correctly deduced two notable things from Bilski, in an interpretation which hopefully will take root in the courts as well.

First, the “machine-or-transformation test”, in which a patentable process must either be closely tied to a particular machine or transform a particular article into a different state of thing, survives as a primary test for routine use. Although the Supreme Court held that “the machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible ‘process’,” it did characterize the test as “a useful and important clue.” Without any hint of what processes, if any, may fail this test while still being eligible for a patent, the burden will lie with software patent applicants to prove that their processes are patentable after failing the machine-or-transformation test.

Second, the Bilski decision effectively kills the “useful, tangible, and concrete” test long favored by patent attorneys who sought to overcome rejections for ineligible subject matter. As the USPTO has tightened its guidelines for computer-related inventions over the years, many applicants cleverly decided to draft their software claims to appear as if their process was tied to a particular machine. However, for those patents which were granted on the basis that their inventions were “useful, tangible, and concrete”?most notably software patents granted immediately following State Street?the Court’s decision in Bilski makes these patents especially vulnerable.

Assuming this characterization of Bilski survives on appeal, I think we will start to see the USPTO take more aggressive steps to stanch the flow of the worst types of software patents. One need only look at the specific claims in the Proudler application to see how patents of this type stifle innovation in computer technology. I cannot think of any computer program that does not have “logically related data items” processed by associated rules. The rest of the claim language contain unintelligible nonsense—the perfect weapon to use against small software developers who can’t afford to defend themselves against patent aggression.

So what will the status of software patents be going forward? Given the Supreme Court’s reluctance to categorically exclude any type of invention from patent-eligibility in the face of unforeseen developments in technology, I believe that at least some forms of software will remain patentable, barring any (unlikely) legislative response to the software patent issue.

Expect to see software patent claims for “computer readable mediums” encoded with “processor executable instructions” challenged under the machine-or-transformation test as not being tied to a specific machine. These challenges may prove successful in invalidating the most abstract of computer software patents, to which patent applicants will respond by drafting process claims with ever increasing references to specific computer hardware. I also expect to see an increasing reliance on system claims with generic hardware elements, such as a processor or computer network, configured to perform steps performed in software. The patentability question for computer software running on general-purpose computers will be decided on the Court’s clear disfavor for “abstract ideas” as seen in the context of the reaffirmed Benson-Flook-Diehr trilogy of Supreme Court cases. The language in these cases which deny patents to “algorithms” and “mental processes” may prove useful in invalidating the most harmful of software patents.

Posted by Michael A. Spiegel on July 16, 2010

Tags: patents, free software, Software Freedom Law Center, Bilski v. Kappos, Software Patents, Proudler Patent Rejection, Proudler , 101 Rejection, The Supreme Court of the United States, Patentability , Bilski, Michael Spiegel

April 6, 2010 by Eben Moglen

Gene Patenting and Free Software: A Breakthrough

[Crossposted from Opensource.com].

Last week, to the surprise of patent lawyers and the biotechnology industry, advocates for technological freedom won an enormous victory against socially harmful distortions of patent law. The Federal District Court for the Southern District of New York held invalid patents owned by Myriad Genetics on diagnostic testing for genetic susceptibility to the most common hereditary forms of breast and ovarian cancer. By "patenting" the right to determine whether the BRCA1 and BRCA2 genes are present in the relevant mutated form in a women's genome, Myriad Genetics has been able to exclude all other laboratories from conducting the test. Patients and their insurers have paid much more, and women and their families have waited crucial weeks longer than necessary for information relevant to treatment and potentially affecting survival.

The Public Patent Foundation and the American Civil Liberties Union challenged the patent on the ground that the Act does not permit the patenting of "facts of nature." In a lengthy and carefully argued opinion granting summary judgment, Judge Robert Sweet agreed. Judge Sweet rejected the basic premise on which gene testing patents such as the one granted to Myriad have been justified: that the amplification of naturally-occurring DNA sequences is a patentable transformation of the DNA molecule. Instead, Judge Sweet adopted the view put forward by Myriad's own expert witnesses, that DNA is a special molecule, "a physical carrier of information," and therefore held that the reading of such naturally-occurring information is not patentable subject matter. Whether posed as a new composition of matter, or as a method for "analyzing" or "comparing" DNA sequences, Judge Sweet held, Myriad's attempt to gain a monopoly on looking at a particular DNA sequence to find out what it says falls outside the permissible scope of patent law.

In reaching his legal conclusions, Judge Sweet relied significantly on the recent opinion of the Court of Appeals for the Federal Circuit, which has primary responsibility for interpreting the nation's patent law, In re Bilski, 535 F.3d 943 (2008), now pending in the Supreme Court. Bilski, as readers here will know, raises issues concerning the patentability of business methods and computer software, on essentially the same basic ground: that, as the Supreme Court has said, "phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972). Judge Sweet's opinion may be said to raise the stakes on Bilski slightly, but the parts of the Federal Circuit opinion on which Judge Sweet relies are not about the "specialized machine or transformation of matter" test adopted by the Federal Circuit to distinguish patentable from unpatentable inventions involving computer software and methods of doing business. Judge Sweet followed the Federal Circuit closely in its expression of the settled law of patent scope, making it more unlikely that the Federal Circuit, which will hear the inevitable appeal from Judge Sweet's judgment, will be inclined to disturb the conclusion.

Instead, Judge Sweet's ruling shows the beginning of a broader front in the judicial determination to reign in patenting that has gone too far, turning information that should be free to all into property exclusively held by a few. Neither our patent law itself, nor the guarantees of freedom to learn and teach protected by the First Amendment, can tolerate the widespread creation of statutory monopolies on ideas. Judge Sweet's conclusion with respect to gene patenting confirms and supports the position taken by the amici curiae in Bilski, including the Software Freedom Law Center, that computer software standing by itself, another carrier of information about algorithms, or mental processes, is not within the scope of patent law. Judge Sweet's opinion illuminates another of the large classes of human knowledge presently being made the subject of statutory monopolies through the patent system, but which cannot legally be made monopolies at all.

Americans have begun to understand a little bit about how, in the last two decades, corporations and their servants turned more and more of our society's opportunities into property for themselves. The sorrow and anger that is entering our politics, as honorable working people realize how badly they were had, will not soon abate. That the patent system too was gamed by the powerful at the expense of everybody else has not been fully grasped yet. But it will be. Time will show that Judge Sweet was more than courageous in his ruling, that he was also speaking with the voice of America behind him, as all great judges do.

Posted by Eben Moglen on April 6, 2010

Tags: infringement, patents, Software Freedom Law Center, Eben Moglen, Bilski v. Kappos, Biotechnology , DNA, Software Patents, Myriad Genetics, Judge Sweet, First Amendment, Breast Cancer , Ovarian Cancer