Enterprise Linux distributor Red Hat has entered what is called an ‘amicus’ brief in a patent appeal case on the US Federal Circuit. A man named Bernard Bilski had applied for a patent on a method for controlling risk in the energy commodity market. The US Patent and Trademark Office rejected the claim as being ‘directed to non-statutory subject matter’ (pdf link), which means that it attempted to gain patent control over something that is excluded from being patented by law. So what does the US law say about what can and cannot be patented?
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.
The US legal code is not much more forthcoming than that on precisely what can be patented. Nuclear weapons are specifically excluded, but otherwise is has been the courts role to flesh out the precise meaning of the sentence quoted above. Certain categories seem to have emerged as uncontroversially outside the range of patentability: laws of nature, abstract ideas and mental processes. Other categories have fluctuated, such as business processes and computer software. Both of these latter have been excluded in the past but have edged into patentability through successive court decisions and artful claim drafting. So Mr Bilski is now in the process of arguing in the Court of Appeals of the Federal Circuit (CAFC) that his business process is in fact eligible for patent protection. The CAFC has decided that the issue underlying this appeal is important enough for them to consider it en banc, meaning that the matter will be decided by all the judges of that court, rather than the usual three judge panel. In order to make up their minds, the CAFC judges have asked for submissions from every interested party (or Amicus Curiae or “friend of the court” ) on what ought and ought not to be patentable in this area. It is in response to this invitation that Red Hat have filed their brief. Red Hat argues that its stock-in-trade – free and open source software – contributes greatly to the American economy but has achieved its current level of success despite a background of uncertainty over potential software patent infringement. This uncertainty, the brief argues, needs to be allayed by a solid decision that software in itself and abstract business processes cannot be patented, and that they can only form part of a patented invention if there is a separate innovative physical process involved. This argument, if accepted, would provide potential means of invalidation against many, many software patents and nearly all business process patents. It will be interesting to see how this develops. The Patently-O blog provides this useful tabulation of all the briefs from interested parties in the case.
While the US is re-examining the wisdom of software patents and business processes, the UK has moved a step closer to approving pure software patents. Back in January the High Court upheld an appeal from a posse of patent applicants (Astron Clinica, Surf Kitchen, Software 2000, Inrotis, Cyan Technology) against the UK Intellectual Property Office’s rejection of their claims. All said that the UKIPO had misapplied a four-step patentability test that arose from the last time this argument was aired in the Aerotel/Macrossan decision (pdf link). Strange though it is to say, that decision is a genuinely entertaining read and provides a marvellous overview of the troubled history of software patentability in the UK and EU. In it Lord Justices Chadwick, Jacob and Neuberger conclude that the test – which was in fact proposed by the UKIPO – should be the basis for establishing patentability. In the case of Astron Clinica et al, the rejected applicants successfully argued that the UKIPO had effectively decided that the outcome of the four step test would always be that pure software was unpatentable, and was therefore simply applying that conclusion to all cases without first actually evaluating the steps of the test. Of course many would argue that the UKIPO were quite justified in doing this, given that the wellspring of governing law for this area, the European Patent Convention 1973 (at article 52) says the following:
(1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.
(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
Nevertheless in his judgement on Astron Clinica et al Mr Justice Kitchin concluded (in part) as follows:
In all these circumstances I have reached the conclusion that claims to computer programs are not necessarily excluded by Article 52. In a case where claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method are allowable, then, in principle, a claim to the program itself should also be allowable.
While this may seem flatly contradictory, it makes slightly more sense against the background of European Patent Office decisions over the last twenty five years. Effectively the exclusion has been eroded away to nothing by crafty drafting of applications and complex rethinking of the nature of what constitutes a ‘technical effect’. Mr Justice Kitchin’s judgement effectively says that if we are going to accept something like a ‘suitably programmed computer’ as the subject of a patent (one of the crafty drafting tactics used to gain software patents in the EU) then we might as well just admit that we are granting software patents and stop the pretense.
With the UK coming more into line with the EU on this issue, and the EU historically trying to come into line with US standards of patentability, it would be ironic if the US decided that actually they now want to reign in the patentability of software.