Patent It Yourself - PDF Archive

ChaPter 5 | Is It PATENTABLE? | 97
1. Processes, Including Software
Also termed “methods,” processes are ways of doing or
making things that involve more than purely mental
manipulations. Processes always have one or more steps,
each of which expresses some activity and manipulates or
treats some physical thing. Purely manual processes were
formerly regarded as nonstatutory, but now even these are
being patented so long as they attain a useful result. Thus
patents have recently been granted on a method of gripping
a golf club and a method of using a keyboard.
a. Conventional Processes
Examples of conventional processes are heat treatments,
chemical reactions for making or changing something, and
ways of making products or chemicals. The PTO has even
recently granted patents on processes of feeding chickens a
special diet that results in better eggs, and combing the hair
to cover a bald area, and analyzing essays for plagiarism.
To give you an example of an extreme process patent,
I represented one side in a patent lawsuit that involved
a patent on a process of attaching a hairpiece to a bald
person’s scalp by putting suture anchors in the scalp and
sewing the piece to the suture anchors. However, although
surgical operations can still be patented, it no longer makes
sense to do so since the law exempts medical practitioners
from infringing any patent on a medical procedure per se.
See Chapter 15, Section F3.
Bilski Changes Standard for Subject-Matter Patentability of Processes
For almost ten years, the standard for patentability for
process or method claims was that they had to define an
invention that produced a “useful, concrete, and tangible
result.” On 2008 Oct 30, the CAFC changed this standard
in the In re Bilski case. The court reinterpreted Sec. 101 of
the patent laws, which broadly states that statutory subject
matter embraces any new and useful process, machine,
manufacture, or composition of matter. In Bilski, they held
that, to satisfy Sec. 101, all process claims must now recite
a process that (1) is tied in a substantial way to a particular
machine or apparatus, or (2) trans forms an article into a
different state or thing. The court said that electrical signals
and data are considered articles if they represent physical
objects or substances. They also state that the purpose
of this ruling is to prevent someone from monopolizing
a “fundamental principle,” that is, laws of nature, natural
phenomena, and abstract ideas. Bilski also said that processes
that merely cover the transformation of legal objects,
relationships, business risks, or “other such abstractions” are
considered nonstatutory subject matter. However, the court
also ruled that if a process is tied to a particular machine, it
is statutory subject matter. The court added, “[w]e leave to
future cases … whether or when recitation of a computer
suffices to tie a process claim to a particular machine.”
I disagree strongly with the decision because the court
is usurping the role of the legislature when it effectively
narrows the accepted definition of “process.” This decision
has cast a cloud on the validity of many patents and pending
applications. If an inventor discovers a process that meets the
other statutory requirements for patentability (usefulness,
novelty, and unobviousness), why shouldn’t the inventor be
able to patent all uses of this “fundamental principle,” just as
inventors can now do with other fundamental discoveries in
the areas of machines, articles, and compositions?
I believe that the court has failed to keep up with modern
technology and hope that Congress will legislatively overrule
it. I was optimistic for a Supreme Court reversal because
in 1980, in the Chakrabarty case, the Court said, “We have
cautioned that courts should not read into the patent laws
limitations and conditions which the legislature has not
expressed” and Congress had intended patentable subject
matter to “include anything under the sun that is made by
man.” However in 2010 the U.S. Supreme Court affirmed
the CAFC’s holding (Bilski v. Kappos, 130 S.Ct. 3218, 2010
Jun 28) and effectively reneged on their earlier assertion
that everything under the sun made by humans could be
patented and the conservatives’ oft-stated assertion that
they don’t write laws but merely interpret them.
They actually stated, without explanation, that Bilski’s
invention was too abstract to patent. (Four of the judges
would even have held that all business methods, even if tied
to hardware, should not be patentable.) However they did
leave the door open to allowing additional subject matter to
be patented, such as software, diagnostic medical techniques,
linear programming, data compression, and manipulation
of digital signals, but left it to the PTO and the CAFC to
determine in future cases. The PTO has published guidelines,
but these are not clear and may not be upheld by the courts,
so I believe that only another clear Supreme Court ruling or
specific legislation would be able to resolve the matter. So
in the meantime if you invent any method, make sure you
describe and claim it so that it either (1) is tied to a particular
machine or apparatus, or (2) transforms a particular article
into a different state or thing.