Patent Office finds voice, calls for software patent sanity

Recent public scorn concerning the faulty software patents approved by the United Stated Patent and Trade-Mark Office’s (USPTO) which led to the legal dispute between Research in Motion and NTP [1] may have been the cause for the recent shift in the USPTO’s stance towards a stricter and more onerous test for software patents. The author of Patent Office finds voice, calls for software patent sanity, Timothy B. Lee, seems to favour USPTO’s “newfound skepticism toward software patents” [2]. I, however, disagree.


In its latest decisions, the USPTO has considerably narrowed the purview of software patents by placing new restrictions on the interpretations of “process” in section 101 of the U.S.C. [3]. The current test for determining whether a particular software falls within the scope of patentable subject-matter was articulated by the Supreme Court of the United States in Diamond v. Diehr, 450 U.S. 175 (1981), and is comprised of two parts: “First, the claim [of the software patent] must qualify as a “process,” as that term has been interpreted by the courts [and] second, the claim must be evaluated [as a whole] for whether it is for an abstract idea, natural phenomenon, or law of nature.” [4]


In two recent decisions [5], the Board of Patent Appeals and Interferences (BPAI) stated that in order for a “process” to be deemed eligible for patent protection it must either “transform and reduce to a different state or thing the subject matter on which an act or series of acts are performed” or “[the process] must be tied to a particular machine” [6].


The question of what constitutes a “particular” machine or apparatus is of considerable importance to would-be software patent holders and has not yet been answered by the US Supreme Court. However, the BPAI has stated in Langemyr that for the purposes of a section 101 analysis, “a general purpose computer” is not a “particular” machine. Consequently, software processes that are tied only to a general purpose computer are not patentable. Moreover, in Wasynczuk [7], the BPAI upheld a claim for a simulation that “occurred on two processors operating in parallel” [8], concluding that two computer processors was sufficient to constitute “a particular apparatus” and was therefore a patentable process. The Board, however, rejected the claim where only one computer processor was used, even though that process was “essentially the method” implemented in the patentable claim. [9]


This seemingly arbitrary bright-line rule should at the very least raise some eyebrows among software patent supporters. As Lee states in his article, it is not logical for the “patentability of an algorithm to depend on the number of processors used to implement it”. The Wasynczuk decision produced more uncertainty than clarification, and has created a potential loop hole for firms to “[add] or remov[e] processors from their software algorithms simply to dodge patent liability.” [10]


Either the US Supreme Court or the government must clarify this issue and end the uncertainty in software patents that the Wasynczuk decision has created because the patents of many software-developing corporations are at risk of being invalidated.



[1] Eric Bangeman, It’s over: RIM and NTP settle BlackBerry dispute, online: < >.


[2] Timothy B. Lee, Patent Office finds voice, calls for software patent sanity, online: < >. [Patent Office finds voice].


[3] 35 U.S.C. § 101, which states that “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”


[4] As affirmed in Ex Parte Lars Langemyr, Magnus Marklund, Arne Nordmark, Per-Olof Persson, and Magnus Ringh, at 15, online: < >. [Langemyr].


[5] Langemyr; and Ex Parte Oleg Wasynczuk, Charles E. Lucas, Eric A. Walters, Juri V. Jatskevich, And Steven F. Glover, Appeal 2008-1496, Application 091884,528, online: < >. [Wasynczuk].


[6] As affirmed from Diamond v. Diehr, 450 U.S. 175 (1981). (emphasis added).


[7] Wasynczuk, supra at note 5.


[8] Patent Office finds voice supra at note 2.


[9] Wasynczuk, supra at note 5 at 25.


[10] Patent Office finds voice supra at note 2.


One Comment
  1. The prayer in the final paragraph of the post that “either the US Supreme Court or the government must clarify this issue” was partly answered on Oct 30, when a 9-3 majority of the Federal Circuit in Re Bilski effectively approved the BAI’s practice and rejected the different “useful, concrete & tangible result” test of patentability favoured by State Street Bank. Perhaps the Supreme Court will take any appeal. I am not sure that the holding meanwhile will much narrow patentability. Rather it requires US patent applications for programs and other methods to be drafted in a more focused way than the very broad application rejected in Bilski covering a method of hedging commodity trades, whether calculated in one’s head or with the aid of a computer program. Seen in that way, the decision probably squares in result at least with decisions in Europe (Simbian, CA, England, Oct 2008) as well as Canada (Schlumberger, 1981) and Australia (Grant, Full FCA, 2006).

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