Chapter 5: Patent Protection for Computer Software & Business Methods

Patentability u 1970’s Computer Programs viewed as –Algorithms –Mathematical Formulae –Statement of Natural Laws Computer Programs not viewed as patentable subject matter Patent applications related to software often rejected under Section 101

Evolving View of Computer Function u D&L Patent Application Claims An improvement to the State of the Art in curing synthetic rubber enabled by Computer Control Use of the Arrhenius Equation implemented in a Computer Program critical to the process Denied as unpatentable by PTO under Section 101

Evolving View of Computer Function u Supreme Court 1981, Diamond v. Diehr Highlights the problem of arbitrary rejection of potentially legitimate Patents under Section 101 due to incorporation of Computer Programs Arrhenius Equation not Patentable but it’s use in a computer program as steps in the curing process does not solely alter patentability of all claims under Section 101 u Computer Related Inventions can be patentable In combination with or as a critical component of a greater Process

Test For Patentability u Freeman-Walter-Abele Test Process employs a Mathematical Algorithm? –If no then there is no concern of protecting use of a natural law –If yes then determine if algorithm is applied to a physical transformation u Software still largely unprotected

Protection Expands in the 90s u Arryhthmia Research Technology, Inc. v. Corazonix Corp. Federal Circuit grants protection of scientifically based process(aka technology) implemented largely in software Signals are processed in real time and transformed by mathematical calculation into a predictor of susceptibility

Business Methods Protectable u State Street Bank and Trust Co. v. Signature Financial Group Method for calculating share fund prices for fund families found by district judge to be unpatentable –Method is mathematical algorithm implemented using a computer –Business Methods are unpatentable

State Street Cont. u Federal Appeals Court Useful Concrete Tangible Result Business Methods not precluded from patent protection Mathematical Algorithms patentable when applied in useful ways Business Methods to be given the same treatment as other statutory subject matter

Are we there yet? Bilski u Bilski seeks to Patent a Method to Hedge Risk(Not Attached to Specific Use or System) Broad Claims, Abstract Idea Rejected by Patent Office Confirmed by Board of Appeals Bilski Appeals to Federal Circuit –Abstractions such as Business Risk are not physical or representations of anything physical –As such no patentable transformations are possible

Protecting Software u Over 200k Patents granted for Software by 2008 u Patent Portfolio Defend by keeping an eye on Industry –Infringement awareness –Strategic License/Release

Other Issues u PTO Overburden Decision in ~42 months as opposed to ~28 Months Rapidly Changing Technology Difficulty Finding Knowledgeable Staff Difficulty of Prior Art Search –Further complicated by decades of software process previously considered to be unpatentable

Other Issues u Copyrights How much protection? –Protects copies of the same work –Aesthetic Attributes may be subjectively protected –Patents protect system from independent creation u International Protection Japan Europe