On June 1, 2009, the United States Supreme Court granted certiorari in Bilski v. Doll, and will consider whether the en banc decision of the Court of Appeals of the Federal Circuit “Federal Circuit” in subjecting business method patents to the “machine or transformation” test was appropriate. Specifically, the Supreme Court will consider the following two issues:
- Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing “machine-or- transformation” test, to be eligible for patenting under 35 U.S.C. §101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”, and
- Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. §273.
EFS-Web is the United States Patent and Trademark Office’s (USPTO’s) web-based patent application and document submission system. I have been filing all my documents electronically since the USPTO started beta testing electronic filing (and I am shocked to see that some law firms still do not use electronic filing).
All documents filed via EFS-Web must be pdfs with embedded fonts, or image-based. This requires a pdf writer. According to the USPTO, versions of commercial PDF Writer software that work with EFS-Web include: [Read more...]
May 26, 1981: Programmer-Attorney Wins First U.S. Software Patent
Link: U.S. Patent No. 4,270,182.
Method claim 1 does not recite any machine or apparatus or call for transforming an article into a different state or thing. A domain name is simply a series of characters representing the address of a resource, such as a server, on the World Wide Web.
Links: Ex parte Atkin.
The legal point to consider from this case is that the PTO will apply its “broadest reasonable” claim interpretation during its §101 analysis. Here, the BPAI panel found that the broadest reasonable interpretation of IBM’s claim does not necessarily “require computer or machine implementation” and thus that the claim fails the “tied to a particular machine” prong of Bilski machine-transformation test.
- BPAI: “Programmed Computer Method” Not Patentable Subject Matter
- Software Method Claims: Bilski in light of Benson
- Post-Bilski BPAI Approves of Beauregard Claims
- Applying Bilski to Metabolite’s Diagnosis Claim
- Applying Bilski to Biotechnology and the Life Sciences
- Bilski: Adding Obvious but Meaningful Limitations
- Professor Collins: In re Bilski: Tangibility Gone “Meta”
- CLE: How to Draft Software Claims under Bilski
- Patenting Tax Strategies Under Bilski
- In re Bilski: Patentable Process Must Either (1) be Tied to a particular machine or (2) Transform a Particular Article
Fish and Richardson:
Electronic Frontier Foundation:
Josh Kopelman at First Round Capital has a good post on the value of patents after fighting for 8.5 years to get one of his granted. His Half.com (Ebay.com) patent received six rejections, half of them final, before it was allowed. I explain this to clients, particularly software startups, on a daily basis – good patents are often very hard to get, you will receive many rejections, and it will be very expensive to respond to those rejections with no guarantee that you will ever be granted a patent. Fire your patent attorney if he fails to explain that to you.
The Free Software Foundation (FSF) released version 3 of the GNU General Public License (GNU GPL). GNU GPL is a free software license. According to FSF, almost three quarters of all free software packages are distributed under the GNU GPL license.