Since the original decision in Ex Parte Bilski, the fate of application 08/833,892 has been a subject of great interest to the patent law community. Last month, the Federal Circuit, on its own initiative, issued an order granting an en banc hearing to the appeal of Bilski’s rejection by the patent office.

Since then, both the patent law community (see, e.g., here, here and here) and the mainstream media (e.g., here and here) have been all atwitter about the possibility of a major shift in patent law and the possible end of business method or software patents (or both). While the excitement is understandable, in this case I think it’s misplaced.

The Federal Circuit asked whether it should reconsider some of its patentable subject matter cases but I think it is unlikely to make any major changes it its existing jurisprudence. Further, to the extent that the Federal Circuit does make changes to its existing jurisprudence, I think it is unlikely that those changes will have much effect on the day to day business of getting patents. My reasons for this can be seen in the questions included in the Federal Circuit’s en banc order.

Question 1: Whether claim 1 of the 08/833,892 patent application claims patent-eligible subject matter under 35 U.S.C. § 101?

This is devoted to the narrow question of what to do with a particular claim in a particular patent. The Federal Circuit could answer this question in the negative by simply agreeing with the BPAI and leaving the broader picture of patent law untouched. While I think that’s unlikely to happen, this first question doesn’t indicate that the Federal Circuit is planning on doing away with business methods in general.

Question 2: What standard should govern in determining whether a process is patent-eligible subject matter under section 101?

This question, while broader than question 1, is focused on a particular class of patentable subject matter (processes), and is therefore unlikely to have much effect on the practice of “business method” patents. The BPAI’s original rejection of Bilski’s claims was based on the concept that the decisions which are generally recognized as opening the door to software and business method patents, State St. Bank & Trust Co. v. Signature Fin. Group and AT&T v. Excel Communications were limited to the “‘special case’ of transformation of data by a machine.”

Using that distinction, even if the Federal Circuit (contrary to statute) completely eliminates protection for process patents, clever attorneys can still get their “business method” patents past the 101 hurdle by casting them in the form of machines that manipulate data. Indeed, even Amazon’s notorious “1-Click” patent includes claims directed to machines, rather than being limited to process claims.

Question 3: 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?

Like question 2, the answer to this question (whatever it is) is unlikely to have much practical effect because it is limited to process claims, and, moreover, to process claims which contain both physical and mental steps. However, as the state of the art in programming progresses, more and more steps which are today “mental” will eventually be performed by a machine, thereby allowing their inclusion in claims. Moreover, even if the Federal Circuit rules that any process including a step which could be performed by a human being is unpatentable, it still leaves open the “special case” of writing claims directed to the transformation of data by a machine, which keeps the door for business method and software patents wide open.

Question 4: 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?

Like questions 2 and 3, regardless of the answer to this question, protection for “business method” type inventions will still be available as long as the invention can be described in terms of data processing. Further, even if that was not the case, requiring that a process be tied to a machine, or result in a physical transformation of an article would do no more than throw up formal barriers which would be easy to overcome.

For example, I can easily tie almost any process I write claims for to a computer, and it would be a trivial task to require that the computers make a physical change in an article (e.g., printing an invoice). Thus, I just don’t see the answer to question 4 really having any significant impact on my (or any other patent prosecutor’s) day to day practice.

Question 5: 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?

Unlike the previous four questions, this last question in the en banc order could result in a major shift in the landscape of patent law. However, even if the Federal Circuit completely overruled State Street and AT&T, at least for software patents, lawyers would be able to continue based on the Supreme Court’s case of Diamond v. Diehr which stated that when a claim containing a mathematical formula implements or applies the formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies 101’s requirements.

As long as that case is good law (and the Federal Circuit doesn’t have the power to overturn it) patent attorneys will be able to use it as shield to protect their software (and likely business method) claims from 101 rejections.

Today’s post comes from Guest Barista William Morriss, a registered patent attorney in Frost Brown Todd’s Cincinnati office and a Contributor to Ephemerallaw.

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6 Comments

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    Data processing with a pen and paper is not patentable.

    Why do you argue that Data processing with a calculator is patentable?

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    An additional reason to support your conclusions: the CAFC can’t ignore Congressional acceptance of business method patents in general, by their passing into law 35 USC 273 (the prior use exemption to infringement of business method patents).

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    […] will become hopeless unless someone intervenes. As we recently learned from Amazon, it may be true that patent applications can be warped to exploit loopholes in the USPTO. Consider this: …the possibility of a major shift in patent law and the possible end of […]

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    […] Midori Itkamrynong58594.blogspot.comBilski: Much Ado About almost Nothing – Patent BaristasToday??s post comes from Guest Barista William Morriss, a registered patent attorney in Frost Brown […]

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    […] like Stephen Albainy-Jenei, an attorney for Frost Brown Todd, suggested in March that Bilski was “much ado about nothing” in part because “clever attorneys can […]