“Bilski Ruling: A Victory on the Path to ending software Patents” reads a short stub on the Bilski decision on the site of Free Software Foundation. As pointed out earlier, the Bilski judgment was expected to deal with patentability of softwares also, but what is surprising is that the word “software” finds mention hardly 2-3 times in the 71-page judgment (twice on internal page 9 and once in footnote 40 on internal page 31).
On page 9, Justice Kennedy observes that if the MT test were to be treated as exclusive, it would affect patentability of softwares, diagnostic methods, data compression techniques et al. This could mean patentability of softwares remains largely untouched and ruling precedents on software patents still remain substantially intact. In fact, the observation of Justice Kennedy suggests that the Court does not consider softwares unpatentable.
Even Justice Stevens, who differed with Justice Kennedy on patentability of business methods, has not held softwares unpatentable. Footnote number 40 on page 31 of his opinion reads as follows:
“Forty years later, Judge Rich authored the State Street opinion that some have understood to make business methods patentable. But State Street dealt with whether a piece of software could be patented and addressed only claims directed at machines, not processes. His opinion may therefore be better understood merely as holding that an otherwise patentable process is not unpatentable simply because it is directed toward the conduct of doing business—an issue the Court has no occasion to address today. See State Street, 149 F. 3d, at 1375.”
What Justice Stevens could be saying is that, since the issue which was dealt with in State Street is not at issue in Bilski, he does not have the occasion to address it. This means he views Bilski as purely a case of business method applications.
Contrast this with Justice Kennedy’s take on State Street as follows:
1. Business methods are patentable;
2. Neither is the MT test an exclusive test to determine patent eligibility nor is the Bilski decision an endorsement of the “useful, concrete, tangible” standard developed by the Federal Circuit in State Street.
In effect, he leaves it to the USPTO and the Federal Circuit to come up with a new standard for allowing business methods, preferably a higher standard (than the one postulated in State Street?).
This also indicates that Justice Kennedy and Justice Stevens differ on the interpretation of State Street; while Justice Kennedy sees it as a case which set the standard hitherto followed for allowing business methods, Justice Stevens views it as a case of software patents tied to a business method. This explains his observation in footnote 40 that State Street dealt with an issue which he has no occasion to deal with in Bilski.
But this does not help us much and leaves quite a few questions unanswered; how would a Court in future sift issues of patentability of softwares from unpatentability of business methods in cases where both softwares and business methods form part of the “invention”? Some feel, it would have been helpful if the Court had shed some light on what is the import of State Street when it says that “an otherwise patentable process is not unpatentable simply because it is directed toward the conduct of doing business” in the context of business method softwares. Now that the Court (majority) holds both methods and softwares as patent eligible, this question could be moot.
Probably, our readers could help us understand this better.
Hi J Sai
Carrying the “business method softwares” forward how does the Bilski judgement effect the patent granted recently to GOOGLE
for its home page?
Please refer to GOOGLE patent grated to its home page in the US on September 1 2009, No USD 599,372 S.
Patent document and Yahoo is also like controversy can be found at http://gawker.com/5350982/google-patents-worlds-simplest-home-page.
Rgds
Manpreet
is not the import of this statement – “an otherwise patentable process is not unpatentable simply because it is directed toward the conduct of doing business” indicating that softwares that are eligible for patentabiilty will be granted patents, even if they use a business method or is directed to doing business.? this is different from something which is merely a business method in abstraction and fails the patentability test.
it seemed fairly clear to me. can you drop your views ?
I don’t see how the Free Software Foundation could possibly have concluded that the Bilski patent litigation decision constitutes a step toward ending software patents. … Of course, reading the majority opinion is a bit like reading tea leaves — it’s so vague that you can interpret it in many ways. However, from the decision I don’t think the Court would necessarily “sift” software and business method patentability within a single case. The decision wasn’t about business methods so much as it was about the invalidity of patents on abstract ideas. Therefore, in a case that involved both business methods and software, I would expect the Court to focus primarily on whether or not the “invention” was an abstract idea. The Court also does not seem inclined to decide issues other than those that are immediately before it, so I wouldn’t expect them to issue any sweeping pronouncements that would affect numerous different cases or industries. What they decide will likely be limited to the facts of each particular case.
Dear Manpreet,
Thanks for the comment. I checked out the site which you have referred to and it says the patent granted to Google on its home page is a design patent, and not a utility patent.
Bests,
Sai.
Hi Anon,
I wanted a clearer import of that observation in the sense it would have been helpful if the Court had considered the possibility of applicants using CAFC’s observation in State Street to work around bar against patentability of certain subject-matter i.e. slipping in unpatentable subject-matter by pushing it along with patentable subject-matter. I was particularly looking for a clarification with respect to subject-matter other than softwares and business methods. This is because, as I state in the last line of the post, since the majority held both business methods and softwares patentable, the query in respect of these subjects is moot.
Bests,
Sai.
Hi Gena777,
I agree with you, but then by holding business methods patentable, the need for “sifting” may not even arise…
Bests,
Sai.