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e trademark regulations tmep tm exam procedure paris convention treaty trademark devices strength of trademarks searching common law rights federal registration infringement dilution on the internet copyright index source materials copyright statute copyright regulations copyright cases obtaining copyrights unprotected works scope of protection fair use notice registration duration ownership sale and licensing database protection mask works ai ai and the law index patents and ai patenting ai section 101 eligibility ai invented inventions copyright protection for ai generated works introduction to ai training of chatgpt ai hallucinations ai patents ai lawsuits us ip office documents pto guidance on ai assisted inventions pto example 39 copyright ai report 1 digital replicas copyright ai report 2 copyrightability blockchains blockchains and the law index intro to blockchains blockchain patents smart contracts daos nfts blockchain lawsuits medical devices medical device index patent primer patent considerations patenting decision patent strategy medical device patent attorney are software and business methods still patentable after the bilski decisions need more guidance see our new guidance on section 101 dealing with section 101 recent court decisions have caused many to question whether software and computer implemented business methods are still patentable under u s law in particular the october 30 2008 in re bilski decision of the federal circuit caused many commentators to suggest that the age of software patents is over the supreme court partially reversed this opinion in its bilski v kappos opinion in june 2010 although the state of the law remains unclear we do know some things first we know many software inventions and at least a few business method inventions remain patentable we also know that some of the software and business method patents issued by the u s patent and trademark office over the last twenty years are no longer valid under the bilski decisions unfortunately we don t have a clear understanding of the dividing line between patentable software and business method inventions and unpatentable ideas the following discussion attempts to place the bilski decisions in context by examining the history of software patents before bilski the decisions by the federal circuit and the supreme court are then analyzed in an attempt to make some sense of these decisions finally some of the viewpoints found elsewhere on the internet are discussed and considered software patents before bilski for more information on this subject see bitlaw s history of software patents in the united states statutory or patentable subject matter under the u s patent act not all inventions are patentable patent attorneys use the phrase patentable subject matter or statutory subject matter to describe that category of inventions that is eligible for patent protection unfortunately the relevant statute language 35 u s c 101 or section 101 is purposefully ambiguous rather than explicitly listing which types of inventions are patentable the statute states that anyone who invents or discovers any new and useful process machine manufacture or composition of matter or any new and useful improvement thereof may obtain a patent the statute clearly does not mention computer software but it also does not mention gene sequences or new types of genetically modified bacteria nonetheless these latter types of inventions have been determined to be statutory subject matter because there is an ambiguity in the statute its meaning must be interpreted by the courts when analyzing this issue the supreme court has stated that when considering whether a new type of invention should be considered statutory subject matter the presumption should be that anything under the sun that is made by man should qualify this language originally came from congress which used this language to describe their intent when the patent statute was enacted in 1952 although this intent shows that the patent statute should be interpreted broadly we must remember that not everything that is discovered by humans was actually made by humans laws of nature and natural phenomenon are not made by anyone but are rather discovered based on this rationale courts have consistently stated that laws of nature natural phenomenon and abstract ideas cannot be considered statutory subject matter abstract mathematics is also generally considered unpatentable either as an expression of a law of nature or as an abstract idea software related inventions as statutory subject matter the question that courts have struggled with is whether a computer software program should be considered like a mathematical formula and therefore unpatentable subject matter or more like a modification to an electrical device and therefore eligible for patent protection in the 1970s the supreme court twice analyzed inventions including computer software and both times held the inventions unpatentable in the 1972 case of gottschalk v benson the supreme court considered whether a method that operated on a computer s shift register to convert binary coded decimal numbers into true binary numbers was a patentable invention the court held that granting a patent for this algorithm on a shift register the court defined the term algorithm as a procedure for solving a given type of mathematical problem would pre empt the entire mathematical algorithm since the court felt it inappropriate for any patent to preempt a mathematical formula this invention was not statutory subject matter in its next case to consider this issue namely parker v flook the supreme court decided that a method for updating an alarm limit that was used to signal abnormal conditions in a catalytic conversion process was also unpatentable subject matter the court felt that since the only new element in flook s invention was the mathematical formula used to calculate the alarm limit the invention was not patentable subject matter even though the invention involved steps beyond mathematical calculations after these two cases most observers felt that computer software would be treated like mathematical algorithms and therefore would be considered unpatentable this thinking changed in 1981 when the supreme court decided for the first time in diamond v diehr that an invention containing computer software should be considered statutory subject matter the invention in this case related to improved computer software that was used to operate a rubber curing process the court held that the invention should be considered an improved process for curing rubber and therefore patentable even though the only new feature of this invention was the timing process controlled in software by a computer the diamond v diehr decision rejected the implication found in the flook decision that one should determine where the new or novel aspect of the invention is found to determine whether an invention is patentable the role of claims in evaluating the patentability of software once diehr opened the door for some software patents inventors and patent attorneys filed many more applications for software related inventions by the early to mid 1990s most patent attorneys considered software to be patentable but only if the software was properly claimed patent claims specifically define the scope of the invention see the patent application section of bitlaw for more information on claims for instance the court in in re lowry held that while claims that recite a particular data structure are unpatentable subject matter the same data structure would be patentable if it was claimed as a memory device that contained that data structure since all computer data structures must be stored in a memory to be of any use in the real world this distinction did not limit the type of inventions that could be patentable but instead informed patent attorneys about the proper way to draft claims for this type of invention this form over substance approach continued in in re beauregard in this 1996 case the patent office withdrew a statutory subject matter rejection during the appeal of a patent application where the claims described computer software residing on a tangible medium such as floppy diskettes even though the federal circuit never issued an opinion in this case patent attorneys learned that while pure software patent claims might be considered unpatentable by the patent office the patent office would accept those same claims if the software was described as residing on a tangible memory device in memory of this abandoned appeal patent attorneys still refer to patent claims that cover software stored on a computer readable media as beauregard claims state street bank the importance of carefully drafting patent claims to meet the current case law largely diminished with the 1998 decision of the federal circuit in state street bank which is often mistakenly believed to be the beginning of computer software patents in the united states in this case the federal circuit made it clear that software was to be considered patentable as long as the software yields a useful concrete and tangible result this case explicitly stated that business methods can be considered patentable subject matter as long as they meet the other requirements for patentability after the state street bank decision many more patent applications were filed on software and business method inventions in fact due to the permissive language of state street some of internet related business method patent applications were filed containing claims that did not even mention the role of computers in the implementation of these inventions in other cases business method patent applications were filed on methods that did not involve computers at all such as on tax avoidance schemes because of the negative publicity surrounding many of these patents and the fact that many bad software patents were issued by the patent office the patent and trademark office has recently made it much more difficult for these patents to issue for instance it is not unusual for a patent applicant in the software field to wait four or more years before the patent office first examines their patent application in addition the rate of allowance by the patent office for these applications is rumored to be under ten percent which is quite low considering that the over all allowance rate for patent applications is more than fifty percent bilski and the federal circuit on october 30 2008 the federal circuit came down with its in re bilski decision in this decision the federal circuit rejected its holding in state street bank that software and business methods need only produce a useful concrete and tangible result in order to be patentable subject matter however the court refused to state that all business methods were unpatentable instead the court replaced the state street bank useful concrete and tangible result test with a new test that applies only to process method claims namely the machine or transformation test bilski s invention related to a method of managing the consumption of risk costs of a commodity sold there were no apparatus claims such as claims including the computer that runs the software or beauregard claims that describe the software as being stored on a memory device in bilski s patent application in addition there were no claims for a computerized process such as a computer implemented method consequently the court did not directly rule on whether these types of claims were patentable instead the majority ruling was limited to the patentability of processes where the process steps are not necessarily performed on a computer after rejecting the state street bank test the majority set forth a single test for determining the patentability of processes this test holds that a process is patentable if 1 it is tied to a particular machine or apparatus or 2 it transforms a particular article into a different state or thing the majority opinion decided not to determine whether a software process operating on a general purpose computer is considered to be tied to a particular machine or apparatus in other words the decision as to whether a general purpose computer is a particular machine was left for another day if this test does hold that a general purpose computer is not a particular machine then many software implemented process patent claims could be invalid in addition the federal circuit did not explicitly determine how this new machine or transformation test applied to apparatus claims such as computer implemented software claims or beauregard claims after performing its own analysis on the federal circuit s in re bilski decision the u s patent and trademark office determined i think correctly that in re bilski is not directly relevant to these types of apparatus claims an analysis of the federal circuit decision reveals that it has several inherent flaws that led many observers to expect a reversal by the supreme court one primary flaw is that it does not appear that the federal circuit correctly interpreted the supreme court s gottschalk v benson parker v flook and diamond v diehr decisions each of these cases emphasized that the determination of whether an invention is patentable subject matter should focus on whether a particular fundamental principal such as an abstract idea a mathematical algorithm or a law of nature has been preempted by a patented claim in contrast under the federal circuit s in re bilski decision it is easy to contemplate scenarios where inventions that might preempt a law of nature would be patentable because the claim transforms an article into a different state or thing such as a patent claim covering all nuclear fission or where inventions that would have no risk of preempting a fundamental principal would fail to pass the federal circuit s test the supreme court s analysis in bilski v kappos in june 2010 the u s supreme court in bilski v kappos partially overturned the federal circuit s in re bilski the supreme court rejected the federal circuit s believe that the sole test for determining the patent eligibility of processes was the machine or transformation test while the supreme court did not completely throw out this test and in fact called the test useful and important the court held that this is not the sole test for determining patent eligibility for processes this decision is unusual in that there is no complete decision that has been adopted by the majority of the court while a portion of the kennedy opinion does constitute a five justice majority justice scalia refused to join two sections of this opinion the portion of this opinion that did win the support of five justices held that the machine or transformation test is not the sole test for determining patent eligibility for processes but is instead a useful and important clue an investigative tool for determining whether some claimed inventions are process...
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