Software and Business Methods Remain Patentable
Software companies that desire patent protection on their innovations or previously spent considerable effort in procuring patents received good news today. The Supreme Court in its Bilski opinion today held that business methods and software can be patentable, but Bilski's claims are not.
The following are some salient points from the Supreme Court's opinion:
- the "machine-or-transformation" test the Federal Circuit enunciated in its Bilski holding "may be a useful and important clue or investigative tool, [but] it is not the sole test for deciding whether an invention is a patent-eligible 'process' under §101."
- this test may have been useful during the Industrial Age, but is inappropriate for inventions during the Information Age.
- Bilski's claims are unpatentable because they claim an abstract idea.
- the Court would like to eventually find a balance between inventors' rights to protect their innovations and others' rights to discover the same invention independently using known principles
However, not all software may continue to be patentable. For example, Judge Steven's concurring opinion called into question the State Street Bank decision that anything with a "useful, tangible or concrete result" is potentially patentable.
Until there is more guidance from lower courts, I plan to continue to draft at least dependent claims that tie methods to computer hardware and, where possible, identify some sort of physical transformation. Once the USPTO outlines what changes it is making to respond to this opinion, I may also attempt to recapture subject matter we previously relinquished to comply with changes the USPTO made to respond to the Federal Circuit's decision in Bliski.
More analysis in this Perkins Coie Update.
