Bilski ruling: a victory on the path to ending software patents (2008)

As opinions form about the extent to which the Court ruling impacts the patenting of software, one thing is clear. The State Street ruling that in 1998 opened the flood gates to the patenting of business methods and software has been gutted, if not technically overturned.

UPDATE: The Supreme Court will hear oral argument on Monday November 9, 2009. Learn more at http://endsoftpatents.org and http://en.swpat.org/wiki/Bilski_v._Kappos.

BOSTON, Massachusetts, USA — Monday, November 10, 2008 — In April of this year, the Free Software Foundation through its End Software Patents (ESP) campaign filed an amicus brief http://endsoftpatents.org/bilski to the U.S. Court of Appeals for the Federal Circuit (CAFC) in their en banc hearing of in re Bilski, describing the hearing as “an historic opportunity to fix the US patent system, as the Bilski rehearing will directly address the boundaries of the subject matter of patents.” On October 30, 2008 the CAFC issued its ruling, and in it ESP sees a victory on the path to ending software patents.

As opinions form about the extent to which the Court ruling impacts the patenting of software, one thing is clear. The State Street ruling that in 1998 opened the flood gates to the patenting of business methods and software has been gutted, if not technically overturned. The vast bulk of software patents that have been used to threaten developers writing code for a GNU/Linux distribution running on general purpose computers have in theory been swept away. The State Street ruling said that you could patent an item if there was a “useful, concrete and tangible result.” In the Bilski ruling, the CAFC have set aside State Street and left us with what they believe to be a simplified test for patentability: the machine or transformation of matter test:

Thus, the proper inquiry under section 101 is not whether the process claim recites sufficient “physical steps,” but rather whether the claim meets the machine-or-transformation test. As a result, even a claim that recites “physical steps” but neither recites a particular machine or apparatus, nor transforms any article into a different state or thing, is not drawn to patent-eligible subject matter. Conversely, a claim that purportedly lacks any “physical steps” but is still tied to a machine or achieves an eligible transformation passes muster under section 101.”

Does the process of loading software on a general purpose computer become a “particular machine” eligible for patenting? As Professor Duffy of Patently-O recently noted, the Patent and Trademark Office Board of Patent Appeals in two recent non-binding rulings (Ex parte Langemyr and Ex parte Wasynczuk) outlined its position on the matter: “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.

The Bilski ruling undoubtedly represents a breakthrough for free software and a success for the FSF’s campaign. But already software patent attorneys are formulating new incantations that they hope will fool the patent examiners into granting software claims, and are instructing their clients to reissue patent applications for pre-existing claims based upon their new theories. Lobbyists for the tech industry are talking up new legislation, and the Federal Trade Commission has announced hearings beginning in December to address recent changes in the patent system: http://www.ftc.gov/opa/2008/11/ipmarketplace.shtm.