On October 30, 2008, the Court of Appeals for the Federal Circuit decided In re Bilski, affirming the finding of the Board of Patent Appeals and Interferences (BPAI) that the claimed invention was not directed to patentable subject matter under 35 U.S.C. § 101. The complete text of the decision can be found here.
Although the Court specifically noted that business method and software patents are not categorically unpatentable, the decision has special import to those types of inventions. In its decision, the court laid out a new test for the patentability of process claims (this test does not apply to apparatus claims).
The New Rule
To be directed to patentable subject matter, the claim must either:
1) be tied to a particular machine or apparatus; or
2) transform a particular article into a different state or thing.
The Court specifically noted that a claimed process where every step may be performed entirely in the human mind would not meet the requirements of this test.
The Court also noted that the involvement of the machine or transformation in the claimed process cannot merely be insignificant extra-solution activity. Thus, writing down the results of a method with a pencil would not be sufficient to tie a claim to a particular apparatus.
Transformation of Data
At first glance, the test may not appear to be a serious limitation on the ability to claim business methods or software processes. After all, most business method and software process inventions transform data and seem to meet the second prong of the test. However, the Court made clear that, while transformation of data may meet the second prong of the test, in order to do so that data must represent specific physical objects or substances.
The Court did not decide exactly what kind of data represents specific physical objects or substances and what data does not. The Court held that the invention at issue in Bilski, a method of hedging risks in commodity trading, was directed only to the transformation of legal obligations or relationships, business risks, or other such abstractions, and not data representing physical obejcts.
On the other hand, an earlier case cited with approval by the Court found a claim directed to the visual depiction of medical data to be patentable because it tranformed data representing physical tangible objects such as bodily tissues.
These two examples give some guidance on what may be considered to transform data representing physical objects or substances, but leave much to be decided by future cases and applications.
Tied to a General Purpose Computer
While the transformation prong poses particular difficulties for business method inventions, the particular machine prong may prove vexatious for software patents. After all, most software is implemented by a computer or other electronic device, which at first glance seems to meet the new test’s first prong.
The Court specifically declined to decide whether or when recitation of a computer would suffice to meet the first prong of the test. The BPAI, which is not a court but part of an administrative agency, has already voiced its opinion that a general purpose computer is not a particular machine or apparatus. Where a software process has utility only on a digital computer, inclusion of a digital computer in the claim adds nothing and cannot render the claim patentable.
It is unclear whether a computer programmed to carry out the claimed method (and therefore not general purpose) or a computer with specific hardware structures could meet the first prong. This part of the test will have to be fleshed out by future cases and applications.
Practical Considerations
It may be a good idea to check existing business method and software patents for compliance with the test of In re Bilski. If problems are identified, it may be possible to remedy them through reissue or continuation practice. New applications in these areas should be drafted with the Bilski test in mind. Particular hardware used to implement software processes should be included where possible without unduly sacrificing claim scope. Where data is transformed, the nature of the data and the fact that it represents physical objects or substances should be stressed, again without giving up valuable claim scope.
If possible, applications should stick to established language for achieving patentability. Applications that create new law or solve unresolved legal issues are often expensive and time-consuming to prosecute.
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Hyra IP, PLC
www.HyraIP.com
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