[time-nuts] HP 5335A and HP-IB (GP-IB)

[Joe Geller]

Without making any judgments about whether there should be business method or 
software patents, I think that advocates are reading more into Bilski than is 
actually there.  

The link to the opinion was posted earlier, the opinion is relatively short and 
generally readable by non-attorneys.  Remember that comments in concurring 
opinions and dissenting opinions are informative, but not law.  It is probably 
better to begin by reading the actual opinion, and only then to look to the 
comments and analysis on web.  The most significant section is the "Opinion of 
the Supreme Court" written by Justice Kennedy which starts at page 5 and ends on 
page 20, a relatively quick read.

Bilski was addressing the question of a business method at the level of "patent 
eligibility".  Patent eligibility is a first question at the "door step" of the 
patent process, before an Examiner begins to consider whether the claims of a 
patent application are novel or non-obvious.

The Supreme court rejected the business method claims in Bilski as not 
patentable since the claims are in the opinion of the court, directed towards an 
abstract idea.  An abstract idea was not patentable under U.S. Patent law before 
Bilski, this is not new law.

The Supreme Court went on to say that Bilski is to be taken as a "narrow" 
decision and that they were not addressing any question of what constitutes a 
patentable “process,”.  "Today, the Court once again declines to impose 
limitations on the Patent Act that are inconsistent with the Act’s text."

A business patent is different than a software patent.  The Supreme court did 
not make any holding on software patents, nor did they state any new law 
regarding the patentability (the patent eligible question) of a business method 
patent.

One very interesting aspect of the decision is that the "machine or 
transformation" test is no longer the only test for evaluating if these classes 
of patents are patent eligible (this is new).  It is unclear if this aspect of 
the opinion makes the patent eligible field wider (some think yes) or narrower.

The terms "Business Method" and "abstract idea" are not well defined.  The 
extent of the "machine or transformation test" (still valid, just no longer an 
exclusive test) is also not well defined.

Regarding the current state of U.S. Patent law, just below the precedential 
weight of the Supreme court is the CAFC, the Court of Appeals for the Federal 
Circuit.  The PTO generally follows holdings of the CAFC unless overturned by 
the Supreme Court or new laws of Congress.

For now, there are no changes regarding software patents (perhaps influenced 
though by what evolves regarding the "machine or transformation test").  The 
Supreme Court specifically stated that they were not offering a new test: "In 
disapproving an exclusive machine-or-transformation test, we by no means 
foreclose the Federal Circuit’s development of other limiting criteria that 
further the purposes of the Patent Act and are not inconsistent with its text".  
Probably more guidance will come from future CAFC cases.

Actions by the PTO Appeals board, while possibly indicative of some new law to 
come, usually many years later, in and of themselves are very case specific 
decisions and highly unlikely to change the current patent law.  Also, I do not 
believe there is currently any simple or distinct test as to what software 
patents are "patent eligible".  Generally some coupling to a machine or 
apparatus is more likely be taken as patent eligible, however that is not a 
legal test.  Also, more likely to survive is an algorithm that performs some 
action, such as steering a ship, for example, but again there is no distinct yes 
or no test.