Patent Law

Software Patents

By Gary Odom and Jordan Kuhn

Software patents are best embodied as method claims. Did yesterday's In re Bilski decision change the patentability landscape for software? Not in the least. If anything, Bilski, reinforced the patentability of software as a data transformer.

Bilski cited two alternative criteria for process patentability: "(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing."

Tying to a "particular machine or apparatus" is hoary, a way to claim machine-dependent processes. A general-purpose computer is not a "particular machine." That makes software processes patentable under (2), not (1).

A claimed process is patent-eligible if it transforms an article into a different state or thing. This transformation must be central to the purpose of the claimed process... [T]he involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity. See Flook, 437 U.S. at 590.

Transforming "a particular article into a different state or thing" is an inarticulate way of stating a requirement for "transforming the subject matter of the claim." As "transformation must be central to the purpose of the claimed process," that centrality is best stated as what is being transformed is the subject matter of the claim.

Suggested preamble for software process claims: "A computer-implemented method comprising:..." Then tell the story of data transformation, concluding with storage, and possibly display, of the transformed result.

Process claims are like writing drama, as there is a central actor, a protagonist. As in drama, the protagonist changes as the story unfolds, even if that change is merely greater understanding. Likewise, the central actor in a software method claim is a data wizard, gathering inputs, storing them, and then transforming them in some way, saving and/or showing the results. Data collation is not enough.

This court and our predecessor court have frequently stated that adding a data-gathering step to an algorithm is insufficient to convert that algorithm into a patent-eligible process. [T]he inherent step of gathering data can also fairly be characterized as insignificant extra-solution activity.

Full post as published by The Patent Prospector on October 31, 2008 (boomark / email).