The United State Supreme Court’s ruling in Bilski v. Kappos today affirmed a lower court’s decision to strike down a patent, but was too narrow to appreciably abate the confusion around which computer software patents are valid, experts say.
The central issue of the case involved the validity of a patent claim for a business method for hedging risks in commodities trading. After the Court spent more time deliberating than any other patent case since the early 1990s, it agreed with a lower federal court ruling that the business method was not patentable.
The federal circuit court ruled in 2008 that while it is okay to have an invention that has a computer in it that performs computations, that pure computation in general is not patentable. It also suggested the creation of a “machine-or-transformation” test that would be used to determine the eligibility of a process for patenting.
The Supreme Court’s ruling strengthened the “abstract idea” exclusion from patentability, but failed to provide an actual test or to give guidance to inventors, defendants or the United States Patent and Trademark Office, said James Grimmelmann, an associate professor at New York Law School. There will be continued uncertainty and confusion around the validity of existing software patents, he added. The abstract idea exclusion is a reference to the principle that laws of nature and abstract ideas are not patentable, he explained.
Some people claim that all software is an abstract idea, because programming is just a form of mathematics, Grimmelmann said. Others think that software is often concrete enough to be patentable because it’s implemented on physical computers, or that those computers control other machinery, or that because the algorithms are actually specific enough not to be “abstract,” he explained. “The Supreme Court appears to come down somewhere in the middle, but doesn’t really say where.”
Mark Lemley, a professor at Stanford Law School and director of Stanford’s program in law, science and technology, credited the court for ruling as narrowly as possible, but acknowledged that many issues still have to be resolved. “There aren’t any tests in this area that work. They can all be manipulated and/or lead to undesirable lines,” he said.