Tuesday, December 10, 2013

Donald Chisum's Article - Patents on Computer-Implemented Methods and Systems

Donald Chisum is a patent scholar who taught for many years as a professor at the University of Washington and Santa Clara University Law Schools. He is also the author of the well regarded Chisum on Patents. This 33-volume treatise is the most cited patent law treatise in American history. It stretches on for thousands of pages. On many legal issues, Chisum on Patents and Chisum's Patent Digest are great places to start for a summary of the law and for citations to cases. When I read the cases, I am impressed how accurately Donald Chisum had summarized U.S. patent law.

Today, Donald Chisum published an article Patents on Computer-Implemented Methods and Systems: The Supreme Court Grants Review (CLS Bank) Background Developments and Comments that states the need for the Supreme Court to clarify the test for patent eligibility of computer-implemented methods and systems.

Here's a passage from the article:

"On December 6, 2013, the Supreme Court granted a petition for certiorari,filed by a patent owner, which presented the following question:

Whether claims to computer-implemented inventions–includingclaims to systems and machines, processes, and items ofmanufacture–are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court. AliceCorporation Pty. Ltd. v. CLS Bank International.

That this question warrants Supreme Court deliberation in 2013 is startling and disgraceful. How can such uncertainty exist in the 21st century about so basic a question as the patentability of computer software? Computers, software, anddisputes about intellectual property protection for programming have been around since the 1960s. The statute at issue (Section 101) is unchanged since 1952.

The responsibility lies squarely at the feet of the Supreme Court. Its confusing statements about the patenting of "abstract ideas" have trickled down tothe lower courts, understandably causing disagreements among judges. Regrettably, the result is one of the most serious diseases that can infect the legal system: similar cases are decided differently based solely on the identities of the judges.

A review of recent case law developments beginning primarily with theSupreme Court's 2010 Bilski decision on the patent-eligibility of businessmethods, together with the details of the subject CLS Bank case, shows how dire the situation has become."

It is well worth consideration by the patent community; if someone with intimate familiarity with US patent law says the Federal Circuits fragmented test is so confusing no one knows how to apply it, it is time for the Supreme Court to speak. After all the concept of the current test for patentability of software related inventions appears to hinge on whether a particular judge or set of judges think it is an abstract idea (after ignoring various claim limitations) without any guidance what remains in or out of the claim. Justice Douglas' legacy is to place a cloud over all software related inventions with the abstract idea exception. It works perfectly if you  think patents are suspect monopolies and don't understand computers. 

Copyright © 2013 Robert Moll. All rights reserved.