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[News] Why Intellectual Monopoly Mustn't Apply to Software, USPTO Wakes Up

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What Intellectual Property Law Should Learn from Software

,----[ Quote ]
| There are lots of reasons to doubt that this vision of âcreation out of 
| nothingâ works very well, even in the arts, the traditional domain of 
| copyright law. But whatever its merits or defects in the arts, it seems 
| completely wrong-headed when it comes to software. Software solutions to 
| practical problems do converge, and programmers definitely draw upon prior 
| lines of code. Worse still, software tends to exhibit ânetwork effects.â 
| Unlike my choice of novel, my choice of word-processing program is strongly 
| influenced, perhaps dominated, by the question of what program other people 
| choose to buy. That means that even if a programmer could find a completely 
| different way to write a word-processing program, this programmer has to be 
| able to make it read the dominant programâs files and mimic its features if 
| the programmer is to attract any customers at all. This hardly sounds like 
| completely divergent creation.            


Interim Guidelines on Examining Statutory Subject Matter

,----[ Quote ]
| The USPTO has issued a set of interim examination guidelines for determining 
| whether a claim is properly directed to patentable subject matter under 35 
| U.S.C. P 101, relevant Supreme Court precedent, and Bilski. The instructions 
| begin with a realization that the area is in flux and that more permanent 
| guidelines will be established once the Supreme Court rules on Bilski v. 
| Kappos. In addition, these are guidelines rather than rules or laws. Thus, an 
| examiner's failure to follow the guidelines is "neither appealable nor 
| petitionable."        


press release:

USPTO Issues Interim Examination Instructions for Evaluating Patent Subject
Matter Eligibility


En Banc Federal Circuit to Address Closely Watched Patent Issue

,----[ Quote ] 
| An upcoming en banc rehearing before the U.S. Court of Appeals for the 
| Federal Circuit has the potential to reverse a written description 
| requirement for patents that the court imposed a dozen years ago. Owners of 
| broadly written patents such as those covering life sciences innovations are 
| watching closely.    



ABA to File Amicus Brief in 'Bilski' Patent Case

,----[ Quote ]
| It's the most important patent case to be taken up by the high court in 50
| years, said Rob Lindefjeld, secretary of the ABA's Intellectual Property Law
| Section.
| "We're really worried that the Supreme Court will do considerable damage to
| patents in the area of methods of doing business that should be entitled to
| protection and swing the pendulum way too far and hurt the patent system for
| a long time," Lindefjeld said in an interview.


Transformers v. Decepticons - Petitionerâs Brief In Bilski

,----[ Quote ]
| Petitioners Bernard Bilski and Rand Warsaw filed their Brief For Petitioners
| last week in what could be this decade's watershed patent ruling. The patent
| at issue relates to a method for managing risk when buying or selling energy
| commodities. The law at issue is whether a process must be tied to: 1) a
| machine or 2) a transformation of a particular article into a different state
| to be patentable (the âmachine-or-transformationâ/âMOTâ test). The Brief
| breaks the case down into five issues...


A Scholar-Activist Challenges U.S. Patent Law

,----[ Quote ]
| Critics of the U.S. patent system have high hopes that 2009 might be the year
| Congress acts to amend it. But their lobbying has failed for years, so John
| F. Duffy sees another path to change: litigation. "I've thought a lot about
| reform of the patent system through the courts," says the George Washington
| University Law School professor. "It's not like the courts can't adjust in
| this area."
| [...]
| Today's debate over patent law generally pits pharmaceutical and traditional
| manufacturers against high-tech companies. Makers of long-lived products want
| strong patent protection to ward off copycats. They and such tech powerhouses
| as IBM (IBM) and Microsoft (MSFT) are backing a Senate bill even though it
| would reduce penalties that patent infringers might be ordered to pay. But
| others in the faster-paced tech sector have turned against the measure
| because it doesn't cap damage awards enough. Without a concerted push by
| business, the Senate may once again shelve action to deal with more pressing
| matters.


Judge Invalidates Software Patent, Citing Bilski

,----[ Quote ]
| "US District Court Judge Andrew Gilford (Central District of California)
| granted a summary judgment motion in DealerTrack v. Huber et al., finding
| DealerTrack's patent (US 7,181,427) â for an automated credit application
| processing system â invalid due to the recent In re Bilski court decision
| that requires a patent to either involve 'transformation' or 'a specific
| machine.' According to Judge Gilford's ruling, DealerTrack 'appears to
| concede that the claims of the '427 Patent do not meet the "transformation"
| prong of the Bilski test.' He then applied the 'specific machine' test and
| noted that, post-Bilski the Board of Patent Appeals and Interferences has
| ruled several times that 'claims reciting the use of general purpose
| processors or computers do not satisfy the [Bilski] test.' Judge Gilford
| analyzes the claims of the '427 patent, notes that they state that
| the 'machine' involved could be a 'dumb terminal' and a 'personal computer,'
| and then concludes: 'None of the claims of the '427 Patent require the use of
| a "particular machine," and the patent is thus invalid under Bilski.'
| DealerTrack apparently plans to appeal the ruling. Interesting times ahead."


Court to rule on âmethodsâ patents

,----[ Quote ]
| In the ruling, the Court decided unanimously that the Sixth Circuit Court had
| improperly âderailedâ an Ohio state courtâs consideration of a claim by a
| death row inmate that he is mentally retarded, and thus cannot be executed.
| The Circuit Court, Justice Ruth Bader Ginsburg wrote in Bobby v. Bies
| (08-598), was wrong in issuing a habeas ruling that inmate Michael Biesâ
| retardation had already been established. Bies must pursue that claim in a
| pending state court case, the Justices concluded.
| In an unsigned (âper curiamâ) opinion, the Court by a 7-2 vote overturned a
| $5 million jury verdict in favor of a railroad employee who had work-related
| brain damage and lung diseases after prolonged exposure to a toxic chemical
| in the workplace. The Court found that the jury should have been instructed
| on what the worker must prove to show a genuine fear that he would someday
| develop cancer. The ruling came in CSX Transportation v. Hensley (08-1034).
| Justices Ginsburg and John Paul Stevens dissented.


Bilski case going to the U.S. Supreme Court


Lessons From Software For Patents, vs. Solving the Software Patent Problem

,----[ Quote ]
| Software patents may be going the way of network neutrality: an arcane policy
| problem once the preserve of a small circle of wonks is becoming a
| politicized slanging match. In both cases an esoteric but important research
| question has become a point of leverage for certain interest groups. In both
| cases the subject (ânetwork neutralityâ, âsoftware patentsâ) is at best
| poorly defined, typically has multiple possible meanings, and at worst is so
| vague as to be useless. And in both cases, the poster child is the small-time
| innovator, while the sugar daddy is a big money player minimizing costs (e.g.
| content providers who love net neutrality, and VCs who hate software
| patents).


Editorial: High tech needs patent reform

,----[ Quote ]
| It isn't often that you see heavyweights in the tech world duking it out in a
| high-stakes match, with Congress as the referee. It's happening today over
| proposed reforms in patent law, which pits the software and information
| technology giants against their counterparts in biotech. The issues are as
| fascinating as they are thorny â and while each side paints the choices as
| black and white, there's enough gray here to cover a fleet of battleships.
| [...]
| One reform everyone agrees on is the need to expedite patent applications.
| The U.S. Patent and Trademark Office has just over 5,000 underpaid and
| overworked examiners to review more than 400,000 new applications each year.
| It would take them two years just to catch up on the current backlog if no
| new applications arrived. This, too, is stifling innovation. The office needs
| the money for more staff.


Sun Loses Bid To Invalidate Patents With Bilski Test

,----[ Quote ]
| A federal judge has shot down an attempt by Sun Microsystems Inc. to use the
| Bilski test to invalidate two patents for product configuration software held
| by Versata Software Inc. that Sun is accused of infringing.


Patentable Subject Matter Redux: Bilski 2009

,----[ Quote ]
| In February 2009, the Board of Patent Appeals (BPAI) issued nine decisions
| that touched on Bilski and patentable subject matter under Section 101 of the
| Patent Act. In eight of the cases, the BPAI either affirmed an examiner's
| Section 101 rejection (five cases) or entered a new ground of rejection under
| Section 101 (three cases). In the remaining case, the BPAI remanded - asking
| the examiner to consider wether the claims were patentable under Section 101.
| All nine cases were related to software or electronics type applications.


FCC Opens ATSC Patent Costs Proceedings

,----[ Quote ]
| The CUT-FATT petition said that American consumers pay $20 to $30 per
| television receiver for intellectual property rights that would cost about $1
| elsewhere.


Two Quick Words About Microsoft v. TomTom: Think Bilski

,----[ Quote ]
| I'll restrict myself for now to two quick words:
| Think Bilski
| Are Microsoft's FAT patents *hardware* patents? No? Then what makes you
| assume they are valid in the post-Bilski world? Don't even get me started on
| obviousness. Let alone who really "invented" that stuff.


Why I donât sign NDAs. . .

,----[ Quote ]
| I call them the 'on the Internet' patents. You can patent anything by adding
| the suffix - 'on the internet'.


Software Patents Are Bogus

,----[ Quote ]
| Scroll down to page 6 and take a look at the title of the patent
| there: âVehicle Computer System with Wireless Internet Connectivity.â
| No joke. Microsoft has patented being able to have a wi-fi capable computer
| in your car.
| Let me repeat: wi-fi + computer + car = patent infringement.
| This illustrates pretty well why software patents are pretty clearly bogusâââ
| how can patent have a wireless computer in a car? How is that unique idea?


Bilski Petitions the Supreme Court to Decide Issues of Patentable Subject

,----[ Quote ]
| In Bilski, the Court of Appeals for the Federal Circuit applied
| the âmachine-or-transformation testâ as the only test to be used in
| determining whether a claimed process is eligible for patenting under  101.
| The decision holds that a claimed process either (1) be tied to a particular
| machine or apparatus or (2) transform a particular article into a different
| state or thing.
| Bilskiâs claimed method of hedging the risk of bad weather through
| commodities trading had been rejected by the USPTO as lacking patentable
| subject matter. On appeal, the Federal Circuit affirmed â finding that the
| method failed the machine-or-transformation test.


Is it Patentable?

,----[ Quote ]
| Two months ago, in In re Bilski, the Federal Circuit rejected the notion that
| anything that produces a "useful, concrete, and tangible result" is
| potentially patentable. Instead, to be patent-eligible, an idea must be "tied
| to a particular machine or apparatus," or it must "transform a particular
| article into a different state or thing." (To qualify for a patent, it also
| has to meet various other requirements, such as being novel.)
| As to transformation, the court noted that not just any transformation will
| do. The transformation "must be central to the purpose of the claimed
| process," and the "articles" transformed must either be "physical objects or
| substances" or "representative of physical objects or substances."


The post-Bilski era begins

,----[ Quote ]
| The In re Bilski (545 F.3d 943 [Fed. Cir. 2008]; hereâs a PDF of the
| decision) court decision placed significant new limits on so-called âprocessâ
| or âbusiness methodâ patents, which possible implications for many software
| patents.


The Post-Bilski Era Gets Underway

,----[ Quote ]
| A set of pharmaceutical process patents for 'evaluating and improving the
| safety of immunization schedules' (Classen v. Biogen et al.; see US Patents
| 6,420,139; 6,638,379; 5,728,385; 5,723,283) were held to be invalid due to
| unpatentability. The decision was appealed to the US Court of Appeals for the
| Federal Circuit, but was upheld with a terse citation to In re Bilski (which
| decision we discussed here).


Applying Bilski to Biotechnology and the Life Sciences

,----[ Quote ]
| For example, although Bilski states that a process claim is "surely"
| patent-eligible under section 101 if it complies with the
| machine-transformation test, this cannot be literally correct with respect to
| a naturally occurring biological process. Photosynthesis transforms carbon
| dioxide and water into sugar, and in Bilski the Court specifically points to
| chemical reactions as the sort of physical transformation that will render a
| process patentable, but a claim directed to photosynthesis would clearly
| violate Supreme Court precedent which bars the patenting of natural
| phenomena.




Bilski ruling: a victory on the path to ending software patents

,----[ Quote ]
| As opinions form about the extent to which the Court ruling impacts the
| patenting of software, one thing is clear. The State Street ruling that in
| 1998 opened the flood gates to the patenting of business methods and software
| has been gutted, if not technically overturned.


Latha Jishnu: Bilski and the madness of methods

,----[ Quote ]
| Why, you may well ask, is the denial of patent to Bernie Bilski for a method
| of managing weather-related risk in commodities making the software open
| source community jump up in joy? A particularly happy lot is the lobby
| campaigning against software patents in India.


Patent decision: New Roadblock to Software/Tech Patents

,----[ Quote ]
| On October 30th a leading U.S. federal court decided the major case of In re
| Bernard L. Bilski. This 100+ page court case could have a major impact on
| software and technology companies, especially those trying to obtain or
| enforce software patents in the U.S.


United States: Long-Awaited âBilskiâ Decision Restricts Patentability Of
Software, Business Methods

,----[ Quote ]
| The Bilski decision is significant because it may affect a patentee's ability
| to enforce existing patents, the prospects for pending patent applications
| and the decision whether to file new patent applications directed to
| so-called "business methods" and software-related innovations....


Bilski - What It Means, Part 4 - The Microsoft Brief

,----[ Quote ]
| The Microsoft brief was filed along with Dell and Symantec, and it's an
| attempt to get the court to deny the Bilski claims while at the same time
| trying to keep the court from going all the way and deciding software should
| not be patentable. There are some logic bumps along the way, as you will see.
| The court diverged from Microsoft's argument about three-quarters of the way
| through, and it didn't directly address software patents, except in one
| footnote, mainly because Bilski wasn't about software. So it left unaddressed
| Microsoft's chief argument about why software should patentable, namely
| because of what it does to a computer. There will be future cases, though,
| that certainly will be on this point, so it seems a good time to point out
| everything we can think of to help the court understand what's wrong with the
| Microsoft-Dell-Symantec position. I'll start, but jump in any time. You'll
| see more than I will, since so many of you are programmers.


USPTO does not like killing business method patents?

,----[ Quote ]
| The New York Times has an article about the recent Bilski decision. The USPTO
| has requested a change in the title of the article.
| [....]
| If Mrs Jennifer Rankin Byrne could point out where she sees the term computer
| in the Bilski decision, that would help to back her statement.


Reactions to the Bilski decision begin to roll in

,----[ Quote ]
| Not being a US patent attorney and not possessing any expertise in US patent
| law, I am not in a position to comment on the CAFCâs Bilski decision handed
| down yesterday. However, I do know a few people who are, so I have been in
| touch with them to get their reactions. Below is what I have had so far. I
| will continue to add to these until the beginning of next week (3rd/4th
| November will be the cut-off).


In regards to In re Bilski

,----[ Quote ]
| On the key question of when information becomes a machine, the ruling does
| provide some clues: âFirst, [...] the use of a specific machine or
| transformation of an article must impose meaningful limits on the claim's
| scope to impart patent-eligibility. [...] Second, the involvement of the
| machine or transformation in the claimed process must not merely be
| insignificant extra-solution activity.â For more on extra-solution activity,
| have a look at my law review article (PDF) that focuses heavily on the idea.


US court narrows scope for business method patents

,----[ Quote ]
| "While looking for 'a useful, concrete and tangible result' may in many
| instances provide useful indications of whether a claim is drawn to a
| fundamental principle or a practical application of such a principle, that
| inquiry is insufficient to determine whether a claim is patent-eligible," it
| said.


Bilski: Almost the Big One

,----[ Quote ]
| The big question is what effect, if any, this decision will have on the
| current referral of a âpoint of lawâ concerning software patents by the
| President of the European Patent Office (EPO) to the EPO âEnlarged Board of
| Appealâ, something I wrote about earlier this week. It would be ironic if, at
| a time when the US courts begin to move away from patenting software âas
| suchâ, the EPO started allowing precisely that through a relaxation of its
| own rules.


So are software patents dead or not?

,----[ Quote ]
| My opinion is that it's going to get harder and harder to patent anything. Of
| course there will be a big push back from business, so this won't happen over
| night, but I think the concept of patents will eventually disappear entirely.


US Court Throws Out Most Software Patents

,----[ Quote ]
| The IT Examiner also observes that "Microsoft has a problem" and that "Much
| of the patent portfolio of some of the world's biggest software companies has
| become worthless overnight, thanks to a ruling yesterday by the US patent
| court."


Court Reshapes Patent Reform Debate

,----[ Quote ]
| In a ruling with huge implications for the technology sector, the U.S. Court
| of Appeals for the Federal Circuit said Oct. 30 pure software or business
| method patents that are neither tied to a specific machine nor change
| something into a different state are not patentable.


In Huge Shift, Court Ruling Effectively Denies Software-Only Patent Rights

,----[ Quote ]
| The case originally centered on a patent for "a method of managing the risk
| of bad weather through commodities trading"âwhich falls more under
| the "business process" bucket, but the same ruling effectively makes
| patenting a specific software process impossible. The previous ruling allowed
| such patents, so long as computers were involved and the process produced
| a "useful, concrete, and tangible result." This ruling rejects that premise,
| favoring instead an older test that only allows patents for things involving
| an actual machine or a transformation of a tangible object into a different
| state.


Professor Collins: In re Bilski: Tangibility Gone âMetaâ

,----[ Quote ]
| Although they are both legitimate questions, this short comment addresses
| neither whether there is a legitimate statutory basis for this test nor
| whether Supreme Court precedent should be interpreted so as to mandate (or
| even support) this test. Rather, it focuses solely on the criteria that the
| court offers to draw the line between patentable and unpatentable
| transformations. The Federal Circuit has added a new twist to the tangibility
| test that has for many years played a role in determining patent-eligibility:
| the tangibility test has gone "meta." The tangibility of the formal data that
| is actually transformed by a method of processing information is not relevant
| to patent-eligibility, but the tangibility of the things that the data is
| aboutâthe tangibility of the informational content of the data or the things
| to which the data refersânow appears to be dispositive.


Bilski: What It Means, Part 1 -- Red Hat on What It Means for FOSS

,----[ Quote ]
| means to everyone: You can't get patents any more on a pure mental process.
| You can no longer patent a process that you can think through all in your
| mind. In other words, abstract ideas are not patentable. There has to be
| either a particular machine or a transformation in the process. So
| pure "ideas" or "mental processes" are over. That means most business methods
| patents are no longer valid because they are outside the parameters of what
| is eligible for patenting. In simple terms, it means this:
| Â Â The End for the stupidest of the stupid patents.
| Yay! It means that the tide is turning. There could still be an appeal of
| Bilski, and even without one, there are ways to chip away at this decision's
| new standard for patentability, to try to get over the new turnstile, so to
| speak, and strategies on how to do that have begun already. I've spent the
| days since the decision issued researching for you, so I can explain Bilski
| to you. There is too much material for just one article. So, I'll break it up
| into parts. My purpose is to make sure you understand fully, so you can be
| helpful with your ideas and so you can explain this issue to others, so they
| understand what is involved for FOSS. If there are parts you don't
| understand, ask. If I don't know the answer, I can ask someone.


US patent ruling bodes well for tech

,----[ Quote ]
| The case in question was rejected because the patent at issue was a process
| not tied to a "machine", which is one standard for patentability.
| [...]
| "The standard articulated in this case should limit the outrageous business
| method and software patents that we have recently seen, without undermining
| the incentive to innovate in these areas."


In re Bilski and the future of business method patents

,----[ Quote ]
| Duffy stressed that the patent at issue in State Street, the 1998 decision
| that gave the OK to software and business method patents, would be fine and
| dandy under the new testâit's just the test itself that changed. The court
| maintained the "core holding" of State Street, said Duffy, merely changing
| the "verbal formulation" required. (And the number of BM patents that will
| still be strong?âMany! Most! Almost all!)


CLE: How to Draft Software Claims under Bilski

,----[ Quote ]
| Going forward, I do not believe that these limitations will have a
| significant impact on a skilled practitioner's ability to patent software
| innovations.


Patent Court: You Can No Longer Patent Thin Air

,----[ Quote ]
| In essence, the ruling means that business ideas in and of themselves arenât
| patentable. In addition to Amazonâs âone-clickâ patent, which is the concept
| of purchasing something via credit card by just clicking a single website
| link, Friendsterâs patents on social networking also come to mind as being
| unpatentable based on this judgement. That patent covers a âsystem, method
| and apparatus for connecting users in an online computer system based on
| their relationships within social networksâ and a âmethod of inducing content
| uploads in a social network,â amongst other claims.


Court limits 'business method' patents


Federal Circuit Enforces Limit on Business Method Patents

,----[ Quote ]
| The result: While the court did not categorically exclude business method
| patents, it held fast the idea that any method, whether business-related or
| not, must be tethered to a machine or some sort of physical transformation,
| says Stephen Maebius, a partner at Foley & Lardner.

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