New USPTO Test Could Limit Software-Based Patents 123
bizwriter writes "The high tech industry has been waiting for a Supreme Court decision in the Bilski case to decide fundamental questions, like when you can patent software. But there's a new test from the Board of Patent Appeals and Interferences (PDF) that just became precedential, meaning that it offers new grounds on which the US Patent and Trademark Office can deny patents on machines that use mathematical algorithms."
Why only precedent now? (Score:3, Interesting)
For those curious, you can find the patent here [patentstorm.us]. Looks like a generic recommendation engine.
My question is, if this was decided in August, why is it only precedent now?
It that normal? Was it time for an appeal?
Re:Simple solution (Score:4, Interesting)
As eloquently illustrated here: http://xkcd.com/435/ [xkcd.com], everything is math. So, the question, as always is where does one draw the line. There is no reason to throw the baby out with the bathwater.
How about this: you may not patent a work that is (or could be) protected by copyright. You can't copyright a physical invention like a new machine, drug, or industrial process. You can copyright manuals and other documents that describe those things, but those documents in and of themselves are not the subject of patents.
Re:Simple solution (Score:3, Interesting)
Unfortunately, if this logic actually held, then software would never have been patentable. An algorithm, if you explain it in a certain way, can sound a whole lot like a machine.
Re:Simple solution (Score:4, Interesting)
You can't copyright a physical invention like a new machine, drug, or industrial process. You can copyright manuals and other documents that describe those things, but those documents in and of themselves are not the subject of patents.
But you can both copyright and patent a machine's visual design, which itself can be described in a document, but the copyright and patent would be on the visual design itself, not the document. So there is precedent for software being both copyrightable and patentable at the same time.
To really complicate things, visual designs can even be trademarked in some countries (including the U.S.)
What you describe is how the system currently is. What I offered was a proposal for how the system might be improved, so naturally it won't reflect the current reality. Still, I like the idea of choosing one. Anytime a work might have multiple forms of intellectual property protection (copyright, patent, trademark, etc), the owner may choose only one. So you may copyright your software but may not also patent it. Or you can patent your software, but then we're free to pirate it :-).
Re:Simple solution (Score:3, Interesting)
As eloquently illustrated here: http://xkcd.com/435/ [xkcd.com], everything is math.
No. We can describe/approximate almost all sciences using math, just like we can describe them using English or any other language. That does not mean that everything is math or linguistics.
So, the question, as always is where does one draw the line. There is no reason to throw the baby out with the bathwater.
That baby already drowned ages ago.
Re:Simple solution (Score:1, Interesting)
Horse crap. That comic says "purity" which is not the same thing anyway.
Math is the language of expression for the results of research in science/engineering (compute the curve of the graph) and is used to predict future results. However, patents don't cover the math itself in those fields, they cover a specific application of it, probably with some actual creativity thrown in (shapes that are more practical like the hexagon design of a nut instead of being circular; also, realising that you could apply the formula to produce the useful result in the first place). Software on the other hand is the math, there is usually no clear separation between the implementation and the derivation that lead to it.
And, again, software is already protected by copyright and is the only field to "enjoy" double protections. [You can't patent a story idea (eg. romance-comedy) and you can't copyright a vacuum cleaner design, why does software deserve both?]
Anyway, this is a sweet move on the USPTO's part, it's nice to know that they aren't completely asleep at the wheel. These new criteria seem to be specifically for the purpose of forcing applicants to narrow the scope of their patent applications, hopefully we won't see more vague crap like 'a mechanism for using a data-entry interface to enter uniquely identifying credentials to access a system' (passwords, also would cover smartcards and just about anything else) [I made this example up but it isn't far off].
Re:Sudden outbreak of common sense? (Score:3, Interesting)
Contradictory? (Score:3, Interesting)
Re:Translations anyone? (Score:3, Interesting)
Essentially, the Supreme Court and the court under it (the Court of Appeals for the Federal Circuit, aka "CAFC" or "Federal Circuit", and its predecessor, the Court of Customs and Patent Appeals, or "CCPA") have over the years reached the legal decision that there are exceptions to the law which says what things are patentable.
That particular law, 35 USC 101, says that new and useful processes, machines, articles of manufacture, and compositions of matter are patentable. So, a trash compactor, being a machine, is patentable. A song, which isn't within any of those four classes, is not. That's sometimes called "not falling within a statutory class" or simply "nonstatutory".
However, the courts have said that there are certain claims that may appear at a glance to be statutory (because they say "a method" or "a system" at the beginning, implying that a process or machine is being claimed), but are actually not statutory. Laws of nature, natural phenomena, and abstract ideas are called "judicial exceptions" because the statute itself doesn't explicitly say that these things are nonstatutory, but the courts have held that they are nonstatutory anyway. So, F = ma is nonstatutory because it's a law of nature; adding two numbers is nonstatutory because it's an abstract idea. But some way of using F = ma or addition might be statutory... depending. (On what? Well, that's the question, ain't it?)
In the current case, Ex parte Gutta, the BPAI (the appeals board, internal to the USPTO, that represents your first line of appeal after the examiner rejects your application) agreed with the examiner's rejection. They said that the method claimed by Gutta was nothing more than a mathematical technique. Essentially, it was (1) calculate the variances of a set of values around each value in the set, and (2) choose the value with the lowest variance as a new "mean" value. There was no mention in the claim of limiting it to a specific application of that technique. So, the claim runs afoul of the judicial exceptions (it's an abstract idea). Essentially, every possible use of the mathematical technique is covered by the claim, and the courts have said that that's not permitted. This is connected to the "machine or transformation" test you may have read about in other /. discussions of Bilski v. Kappos, in that the "machine or transformation" test is supposed to tell you whether the claim is directed to a judicial exception or not.
But the board went beyond Bilski in this case, saying that the same principles apply to system claims or computer-readable medium claims. Essentially, saying that you have a "system with a processor and a memory, wherein the processor is configured to perform the steps of..." is just window dressing when the "steps of..." are something that would be nonstatutory on their own in a method claim. This is important, because in the vast majority of computer-related applications, the applicant will present three sets of claims: one claiming a method, one claiming a system which performs the method, and one claiming a computer-readable medium (CRM) in which is embodied a program which performs the method when executed by a computer. Without Ex parte Gutta, the policy of the USPTO has been to reject the method claim under 35 USC 101 if it fails the machine or transformation test, but not reject the system and CRM claims, because the processor and/or the CRM makes it statutory. Depending on the result of Bilski v. Kappos (expected in a couple of months from the Supreme Court), Gutta may become a useful tool to prevent window dressing from making an otherwise unpatentable method patentable as a computer programmed to do that method.
One caveat, however, is that Gutta was particularly egregious in terms of the abstractness of the claimed method. A lot of claims in other applications involve manipulations of data. For example, taking an x-ray image of a person, adjusting the contrast or other aspects of the x-ray image, and displaying the mo