Eric Waltmire's Blog

Software Patent News for March 16th:

• Patentable Subject Matter Redux: Bilski 2009 (Ex Parte Motoyama) [Patently-O] –
  “In Ex Parte Motoyama, Appeal 2008-2753 (Bd. Pat. App. Int., Feb. 27, 2009) . . . the BPAI reversed an examiner's Section 103(a) obviousness rejection, but entered a new ground of rejection as failing the Bilski test of patentable subject matter under Section 101 of the Patent Act. . . . The panel recognized that the claim language did refer to a "monitoring device." However, according to the BPAI, the method "is not recited in terms of hardware or tangible structural elements. Rather, the method could be implemented on a software system, where the elements of claim 1 are implemented solely in software or algorithms.”
• Red Hat Seeks Software Patents as Defensive Strategy [ Redhat.com] – –
  "Red Hat has consistently taken the position that software patents generally impede innovation in software development and that software patents are inconsistent with open source/free software. . . At the same time, we are forced to live in the world as it is, and that world currently permits software patents. . . We believe such massive software patent portfolios are ripe for misuse because of the questionable nature of many software patents generally and because of the high cost of patent litigation. One defense against such misuse is to develop a corresponding portfolio of software patents for defensive purposes. . . . In the interests of our company and in an attempt to protect and promote the open source community, Red Hat has elected to adopt this same stance. We do so reluctantly because of the perceived inconsistency with our stance against software patents; however, prudence dictates this position."
• Can computer software be patented in China? [European Patent Office] –
  Computer programs as such cannot be patented, but may be protected under the "Regulations on Computers Software Protection", formulated in accordance with the Copyright Law. An invention containing a computer program may be patentable if the combination of software and hardware as a whole can really improve prior art, bring about technical results and constitute a complete technical solution.

Software Patent Bits for February 24th:

• 25 Patent Blogs [IPWatchdog.com] –
• Article: Patent Rights Under FOSS Licensing Schemes [Shidler Journal of Law, Commerce & Technology] –
  Abstract: "Free/Open Source Software (“FOSS”) licenses generally give developers and users the freedom to run software for any purpose, to study and modify software, and to redistribute copies of either the original or the modified software without paying royalties to previous developers. The FOSS community is facing increasing threats from software patents, especially from entities outside the FOSS community. This Article discusses patent rights under FOSS licenses, including the GNU General Public License (“GPL”) 2.0 and draft 3.0, the Apache License and the Mozilla Public License (“MPL”). It also addresses how current GPL draft 3.0 attempts to reconcile the conflict between software freedom/innovation and patent protection, and to resolve the compatibility of GPL draft 3.0 with other FOSS licenses."

Software Patent Bits for February 12th:

• U.K. patent office ordered to accept software patent [Computer World] –
  "At issue is a patent that Symbian Ltd. applied for and that was rejected in July 2007 by the U.K. Intellectual Property Office (IPO). Symbian sought a patent for a system that makes accessing dynamic link libraries — or files used by more than one application — more reliable. The IPO rejected the application, saying that the innovation was computer code, which is not patentable. The Court of Appeals, however, overturned the decision on Tuesday and said the system is patentable."
• Patents and FOSS — Rob Tiller of Red Hat at SCALE 7x — Southern California Linux Expo –
  Rob Tiller, vice president and assistant general counsel, IP for Red Hat, will explore the legal issues raised by patent law for FOSS developers and users. Tiller will provide an overview for non-lawyers on exclusionary patent rights and contrast those with the open collaboration culture of FOSS. He will also discuss the recent Bilski decision of the U.S. Federal Circuit, and how that decision might improve the current problem of software patents facing FOSS developers.

Software Patent News for February 11th:

• JPO Launches a project for public review of patent applications [East Meets West]
  The JPO [Japanese Patent Office] launched a project for public review of patent applications similar to the USPTO’s “Peer-to-Patent” system. The project concentrates on patent applications in the information technology field (e.g. computers, software, networks, etc.).
• Microsoft receives its 10,000th US patent [Ars Technica] –
  . . .the Institute of Electrical and Electronics Engineers (IEEE) ranked Microsoft’s patent portfolio first across all industries in terms of its power and influence for the second year in a row. It’s not just new patents though; Microsoft has been striking more patent cross-licensing deals as well . . .Bart Eppenauer, chief patent counsel for Microsoft states, “Most technology companies, Microsoft included, have been increasing their emphasis on IP in recent years, trying to derive greater business value from their intellectual assets. One way to value a patent portfolio is to look at the quantity of patents it contains. Another way is to look at the influence the portfolio has on others.”

Software Patent News for February 7th:

• No No Words: What Words do you Avoid in Patent Applications [Patently-O] –
  Dennis is "planning to do a quick study of "no no words" in patent applications and how their use has changed over time. Examples include "objects of the invention," the "present invention," "must," "prior art," "limitation," …" Add to the list in the comments at Patently-O.
• Patent litigaiton in the US is a minority sport and we should not lose sight of that [IAM] –
  in 2003 2,814 patent suits were filed in the US and that by 2007 this number had risen to 2,896. In other words, there was almost no overall change at all. They might also want to check out the recent news that the number of patent cases filed in American courts declined significantly at the back end of 2008.

Software Patent News for February 5th:

• The History of Software Patents [IPWatchdog.com] –
  Eugene Quinn: "this is the first in a series of articles that will explore the history of software patents and how we have gotten to the point where we are today."
• The BPAI and the Machine or Transformation test of Bilski [Patently-O] –
  "In three recent cases, the BPAI has continued its trend of applying the Federal Circuit's en banc Bilski decision to reject software-style method claims as lacking patentable subject matter. The BPAI is not asserting that software is unpatentable — the Board is simply failing to find ties to a particular machine; transformation of a physical object; or transformation of articles "representative of physical objects.""
• EPO Enlarged Board of Appeal to Clarify Software Patentability [DWW] –
  "The President of the European Patent Office (EPO) has referred several questions of law to the EPO’s Enlarged Board of Appeal (EBoA) in an attempt to clarify the patentability of software-based inventions. The European Patent Convention excludes software “as such” from patentability, but EPO Technical Boards of Appeal (TBAs) have often allowed patents for inventions where the inventive step is entirely performed by software, as long as the invention has “technical character”. However, there have been inconsistent interpretations of what this means."

Software Patent Bits for February 5th:

• The Last Defence Of The IP System: An Interview With Jamie Boyle [Intellectual Property Watch] –
  "I think open access and commercial forms of distribution are not incompatible. If you look at IBM, IBM is the largest patent holder in the world and they now make twice as much from Linux-related revenues, open-source software-related revenues, as they make through their patent portfolio. They’re not doing it for charity, they’re not doing it because they’re ideologues, they’re not even doing that because they love freedom, or they love the inventive possibilities which it creates worldwide. They’re doing it because it helps their bottom line."
• The Limits of Abstract Patents in an Intangible Economy [Brookings Institution] –
  "Abstract ideas are not patentable, but what are abstract ideas – and how can judges draw a line around them? . . .This conference . . . looked at the problem of abstract patents from both economic and legal perspectives. How well do abstract patents work? What problems do they create? Can we do better than the standard in Bilski?" — A full transcript of the conference is available as well as several background papers written by panelists.

Software Patent News for January 24th:

• UK IPO sticks to four-step software patent test [ITProPortal.com] –
  "The [UK] Intellectual Property Office has previously recognised that an invention which either solves a technical problem external to the computer or solves "a technical problem within the computer" is not excluded," it said. "What Symbian has now shown is that improving the operation of a computer by solving a problem arising from the way the computer was programmed – for example, a tendency to crash due to conflicting library program calls – can also be regarded as solving "a technical problem within the computer" if it leads to a more reliable computer."
• Canada, Intellectual Property, Bilski Applied: The Start Of The Ripple Effect [mondaq.com] –
  ". . .the law in Canada has always been more restrictive in this field [software patents] than in the United States. Since the 1981 decision of Schlumberger Canada Ltd. v. Commissioner of Patents [(1981) 56 C.P.R. (2d) 204 (FCA)], software-related inventions have been patentable [in Canada] if the new software was coupled with computer hardware, even if the hardware component is nominal."
• April deadline set for submissions in EPO Software Patent Case [Managing Intellectual Property] –
  Interested parties have until the end of April to submit written statements to the EPO’s Enlarged Board of Appeal for the president’s referral on the patentability of computer programs. Given the controversy over the patenting of computer programs in recent years, a large number of submissions can be expected, from the software industry, legal professionals, trade associations and the open-source and anti-software patent communities.
• Battle Between Software Patents and Open Source [IPWatchdog.com] –
  Pat Quinn on Software Patents "I am just a patent attorney who thinks software ought to be patentable and that the Federal Circuit went way farther than it should have in Bilski. But I can’t help but notice that by making open source software a priority President Obama is potentially showing his hand and throwing in with those who would rather not see a strong and vibrant patent system. . .
  . . . I trace back the fall of proprietary software and the beginning of the end of software patents to the day the Supreme Court issued its decision in the Microsoft-AT&T case. One curious aspect of the Microsoft-AT&T decision was the choice by the majority to characterize software that is not in a format capable of being immediately loaded onto a computer as “an idea without physical embodiment.” "

Software Patent News for January 19th:

• Patent suit on method of using Icons that look like the content of the files they represent [Patently-O] –
  In 1998 three central-Indiana inventors filed for patent protection iconic software. The claims – finally issued in 2008 – cover a method of using icons that look like the content of the files they represent. The first named inventor – Greg Swartz – moved to Arizona and has recently filed an infringement complaint in that state. Defendants include Google (Chrome Browser), Microsoft (Vista), and Apple (iPhone). (U.S. Patent No. 7,346,850; ArsTechnica).
• IBM garners most patents — again [InfoWorld]–
  2008 is the 16th straight year that Big Blue led the race, pulling in 4,186 patents throughout 2008. Samsung ranked second with 3,515 patents, Canon third at 2,114, while Microsoft was fourth with 2,030, and Intel took the fifth spot with 1,776. Hewlett-Packard, meanwhile, came in at number 10 with 1,424.
• IBM tops patent leadership in 2008 too [Business Standard] –
  IBM plans to increase by 50 per cent, to more than 3,000, the number of technical inventions it publishes annually instead of seeking patent protection”. He, however, highlighted IBM’s pledge not to assert certain software patents against the open source community; and not to assert any patent against 150 software interoperability standards.
• Liveblog: TACD IP: Patent Reform [Gavin Baker] –
  Live Blog of Trans Atlantic Consumer Dialogue (TACD) Workship on Patents, Copyrights and Knowledge Governance: The Next Four Years (Workshophttp://www.tacd-ip.org/blog/?page_id=5); Panel 5 – Patent Reform
• Wegner’s Top Ten Patent Cases in 2009 [Patent Baristas] –
  Including: “4) Bilski v. Doll:. . . since the claims in Bilski were not tied to particular hardware, the court did not consider the viability of patenting specific functions carried out by a computer. Now, how the phrase “tied to a particular machine” will be applied to software patents.”
• ABA on the USPTO to president-elect Obama [IAM] –
  The IP section of the Amercan Bar Association suggests a number of reforms which it believes will enhance the USPTO’s operation.

Software Patent Bits for October 13th through October 31st:

• In re Bilski Decision Analysis [Patently-O] – Patentable Process Must Either (1) be Tied to a particular machine or (2) Transform a Particular Article
• Paul Cole on Patentability of Computer Software in UK [Patently-O] – In Symbian Limited v. Comptroller General of Patents [2008] EWCA Civ 1066, the UK Court of Appeal recently took a broader approach to patentability of software. UK patent attorney and author Paul Cole has written a short article for the Patently-O Patent Law Journal discussing the case and its impact.