28 February 2009

Is a computer a particular machine?

In my previous post I was a bit loose with the number of independent claims that could be drafted for a software patent specification. I should have mentioned that in the United States, there is a penalty fee for each independent claim in excess of three.

Unfortunately, as far as the US is concerned, the case of in re Bilski has created a fair amount of confusion regarding the protection of software products. The case has, however, finally put the possibilty of getting business methods protected in the US to rest, which is a relief.

There is plenty of reading material available out there, but I'll try to simplify it a little.

The court in Bilski said that in order for a process to be patentable, it must be tied to a particular machine or it must result in the transformation of an article. This is called the "machine or transformation" test and has been developed over a number of cases in the US. Us patent attorneys have always relied on the argument that a software product is tied to a computer. However, a number of decisions handed down by the Board of Patent Appeals and Interferences (BPAI), have questioned that reliance. Apparently, a computer is not a particular machine, but rather a general purpose device. In my view that's rubbish. But the result is that applicants are presently having difficulties getting US patents for software products that don't relate specifically to physical objects. For example, a software product that covers a way of maniputing and generating financial values might not cut the mustard as far as the US patent examiners are concerned.

By the way, the BPAI is a board that has been set up to review adverse decisions by patent examiners.

How does that effect us here in Australia? Well, at the moment, we can still rely on the fact that a computer is a machine, although we do it in a different way (see the relevant label). However, it won't be long before our examiners start getting the same attitude. That's a combination of IPAustralia's propensity to look to the US for guidance and to its small obsession with that old pie in the sky, harmonisation.

1 comment:

  1. It certainly seems as though stronger patents would help to minimize patent infringement and make patent enforcement easier.

    I have to say that software patents must be some of the most difficult cases to handle and that I have heard that General Patent has a pretty good track record in some of the big name cases involving companies like Verizon, Microsoft and Apple. It is a good day when the little guy is protected from the giants who think they can just steamroll over everyone else.

    I read an article at: http://www.generalpatent.com/2009/05/07/response-andy-grove that made some pretty good points about the need for stronger patents.

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