Friday, October 31, 2008

What the Bilski decision means for software patents


I am not a lawyer. I think that needs repeating, I m not a lawyer. :-) So, please get an opinion from a true IP attorney.

I have been doing a bit of digging around the last couple of days to try to understand what this decision means. I can't possibly do as good a job as the Patent Law Blog, so go here and read the whole thing:

http://www.patentlyo.com/patent/2008/10/in-re-bilski.html

I'll summarize what I think is the most important point:

"the court made clear that business methods and Software will still be patentable – if they meet the machine-or-transformation test."
As long as the software is tied to a specific thing, such as software to control a fuel injection system on an automobile. But, you have to remember this:
"A general purpose computer is not a particular machine, and thus innovative software processes are unpatentable if they are tied only to a general purpose computer."
However, you also have the transformation test. So, what is "transformation"?
"transformed articles must be physical objects or substances [or] representative of physical objects or substances."
And, then there's this:
"a claimed process where every step may be performed entirely in the human mind. In that situation, the machine-or-transformation test would lead to unpatentability"
In my personal view, it would appear that there are still many potentially patentable software innovations. But, patenting pure algorithms is out. Sorry, your new method for improving the bubble-sort probably won't fly.

What do you think? Please add your thoughts in the comments.

1 comment:

John Lanza said...

Where did this quote come from : "A general purpose computer is not a particular machine, and thus innovative software processes are unpatentable if they are tied only to a general purpose computer."? I don't recall seeing it in the Bilski decision and, in fact, Bilski cites with approval the patenting of the method in State Street, which included means-plus-function clauses that tied back only to software on a general purpose computer.

Bilski alters the analysis only at the margins. For many, many entrepreneurs in the web/software space, the analysis whether to spend money on a patent application is the same as it ever was.