The Federal Circuit Court of Appeals is reviewing a case that could lead to the abolition of software patents.  The case in question concerns a patent submission for “managing the consumption risk costs of a commodity”, whatever that means.  The patent office refused to consider such an abstract idea as patentable.  However, many of the patents that are owned by such behemoths as Microsoft and Google could conceivably be argued, are based on abstract ideas.

Bernard Bilski, CEO of Weatherwise, filed the patent application in question.  The Court of Appeals is taking the unusual step of hearing the appeal en banc (all the judges and not just a three judge panel).  Several Amicus briefs, non-party briefs, have been filed.  The ACLU(American Civil Liberties Union), EFF(Electronic Frontier Foundation) and ESP(End Software Patents Project) have all filed Amicus briefs.

In order to receive a patent, an inventor must show that the item he wants patented is: 1. something that can be patented (not an abstract idea), 2. novel (U.S.),new(Europe); 2. non-obvious(U.S.),inventive(Europe); and 3.useful(U.S.),industrially applicable(Europe).  A patent gives the inventor exclusive rights to the invention for 20 years in the U.S.  Frequently, the invention is licensed to others for manufacturing or further development.

The fact that the Federal Circuit Court of Appeals has decided to hear this case en banc could signal a significant change in the courts analysis of patent cases.  The judges requested that the following five questions be answered by the parties and Amicus briefs:

Whether claim 1 of the 08/833,892(Bilski) patent application makes a claim for a patent-eligible subject matter under 35 U.S.C. § 101?

What standard should govern in determining whether a process is patent-eligible subject matter under section 101?

Whether the claimed subject matter is not patent-eligible because it constitutes an abstract idea or mental process; when does a claim that contains both mental and physical steps create patent-eligible subject matter?

Whether a method or process must result in a physical transformation of an article or be tied to a machine to be patent-eligible subject matter under section 101? 

Whether it is appropriate to reconsider State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999), in this case and, if so, whether those cases should be overruled in any respect?

 

The questions, as you can see, revolve primarily around the issue of what exactly can be patented under the statute cited above.  The issue has not been settled to the satisfaction of the judges since they have specifically requested input concerning two cases that are 9 and 10 years old.  I won’t bore you with the legal rulings in the cases, especially as the court is looking to possibly over-rule both cases. 

Should the Federal Circuit decide that “methods” such as Bilski’s are not suitable subject matter for patents, then other “methods”, that have been translated into software, could have void or voidable patents. Although this would cut down on the law suits between companies like Microsoft, Google, and Yahoo, it could also undercut their financial standing as well.  Microsoft and other companies would no longer be able to insist on individual licenses for every computer that uses the software.  There would no longer be anything to pirate. 

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Entry was posted on Friday, April 11th, 2008 at 5:53 pm under Europe, Google, Legal, Microsoft, Opinion, Software, Technology, Vista, Windows XP, Yahoo!.  Print This Post

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