Software and Business Method Patents Update

by Adam Philipp on November 25, 2008

You may have heard rumors that business method patents are dead, but their death is greatly exaggerated. Like all good rumors, however, there is an element of truth. A recent case, called “In re Bilski”, commonly called “Bilski”, does have an impact on business method and software patents.

All Bilski does is change the requirements for obtaining business method and software patents. Unfortunately, these new requirements will make obtaining a business method patent, without some computing steps, quite difficult. However, while many people have suggested that the case will make it equally hard to obtain software patents, they’re wrong.

So, what’s the big change? The Court redefined and clarified requirements for what is and isn’t patentable. In the process, it said only methods applying to a particular machine or a transformation of physical objects are patentable. Lawyers call this the “machine or transformation” test. This new test is a little different, a little clearer, and a bit tougher than those older standards.

What didn’t change? The language used in the patent’s claims has always been the most important consideration, and the recent decision underscores this. Software patents are made up of claims. Claims define exactly what infringes the patent. It is the language of the claims that needs to pass the machine or transformation test just mentioned, not every part of the patent application.

Are business methods still patentable? It’s going to be hard. The Court said that only business method claims that apply to a particular machine or perform some transformation on physical objects will patentable. For a “pure” business method patent, this might be a tough test to pass.

Can I still get a software patent? Yes. As mentioned, the language employed in the claim of the application is critical, and those claims need to pass the machine or transformation test. So, as an alternative, consider writing the claims to include additional elements of the computer in order to pass the first alternative of that test. For example, you might want to include language such as “a processor A, a processor B, and a processor C.” Alternatively, your claims could involve a transformation of data that represents real life objects. In any event, Bilski changed the world of patents a bit, but it clearly did not eliminate software patents—as long as you are careful about how you write your claims.

The complete text of In re Bilski
The United States Patent and Trademark Office

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