On December 9, I posted CLS Bank v. Alice Corp. - Amici Briefs Addressing Software Patents
that gave links to Google et al. and EFF's amici briefs that attempt to guide the Federal Circuit on the topic of software patent eligibility.
Today, Professor Crouch states in his article Patenting Software: Obama Administration Argues "Sometimes"
that the United States amicus brief
"rejects the idea that software per se
represents patentable subject matter but is favorable toward the patenting of computerized applications that either improve computer performance, use technology in a unique technologic way, or transform the local environment." The U.S. brief "suggests a claim-by-claim subject matter analysis that begins with claim construction and only then asks whether the challenged claim, properly construed, incorporates enough meaningful limitations to ensure that it amounts to more than a claim for the abstract idea itself."
Professor Crouch notes the U.S. brief lists "factors that the government sees as important in making that determination:
- Is the computer only nominally or tangentially related to the performance of the invention?
- Is the computer generically recited or, instead are specific, unconventional computer equipment or tools required?
- Is the invention focused primarily on non-technological fields or does the invention improve the ability of a computer to function as a computer?
- Is the computer used generically for its automation or communication functions or does the computer manipulate particular data in particular, specific, and useful ways?
- Is the abstract idea merely described within a particular environment or is the abstract idea part of an invention that transforms its environment.
- Are the computer related elements merely conventional steps described at a high level of generality in a way that would be employed by anyone wanting to apply the abstract idea."
About the USPTO supporting this brief, I couldn't help but notice how the brief compares to outgoing United States Patent and Trademark Office Director Kappos recent speech about software patents
where he addressed the question 'should we treat software differently than hardware when it comes to patentability?' His answer: 'No. Absolutely not."
To this I add a few observations on the proposed test and factors:
- The U.S amici brief is designated as not in favor of either party, but seems to favor the defendant when you consider how the factors might apply to the representative claim 1:
1. A data processing system to enable the exchange of an obligation between parties, the system comprising:
a data storage unit having stored therein information about a shadow credit record and shadow debit record for a party, independent from a credit record and debit record maintained by an exchange institution; and
a computer, coupled to said data storage unit, that is configured to (a) receive a transaction; (b) electronically adjust said shadow credit record and/or said shadow debit record in order to effect an exchange obligation arising from said transaction, allowing only those transactions that do not result in a value of said shadow debit record being less than a value of said shadow credit record; and (c) generate an instruction to said exchange institution at the end of a period of time to adjust said credit record and/or said debit record in accordance with the adjustment of said shadow credit record and/or said shadow debit record, wherein said instruction being an irrevocable, time invariant obligation placed on said exchange institution.
- What unconventional computer equipment or tools do you require for patent eligibility?
- Trying to resolve whether a claim is too abstract by analyzing if the computer is only nominally or tangentially related to the performance of the invention may engender arguments: "my client's invention is substantially and directly related to the performance of the invention," to which the defendant replies "it is not" and "it is too!"
- Is the computer used generically for its automation or communication functions or does the computer manipulate particular data in particular, specific, and useful ways? Referring to the first condition, computer software is often used for "automation" and "communication" functions so it sounds like many software patent claims would be ineligible. On the other hand, the second condition implies a claim need only recite the software manipulates particular data in a particular, specific and useful way. Thank God, my software doesn't manipulate just any old data, it's particular, yes and it's not manipulating non-particular data in a non-useful way either. Good, my patent claim must be eligible! But wait my claim also involves automation and communication, now what?
- Is this abstract idea merely described within a particular environment or is the abstract idea part of an invention that transforms its environment. Now you have me confused ... I thought abstract meant not patent eligible and not abstract meant eligible. But now you tell me it is all about transforming the environment, and doing it in a particular environment is not going to help out? I must transform the environment? Okay, how about this: my computer software runs on a bunch of servers that kick out a lot of heat. Doesn't raising the temperature in my server room transform (i.e., cold to hot) the environment? What's transform mean again?
The problem is these factors shift the focus away from the fundamental question on whether the subject matter is abstract (patent ineligible) or not abstract (patent eligible).
Maybe we should return to the Inventions Patentable statute, 35 USC 101, that Judge Giles Rich and P.J. Federico drafted in 1952: Whoever invents or discovers any new and useful process, machine, manufacture ... or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." No, we can't do that - it's much too simple.
Copyright © 2012 Robert Moll. All rights reserved.