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The Blog Of David Marks

More on software patents: PTO changes standard of patentability with new test

Posted on | December 22, 2009 | No Comments

In its fourth precedential opinion of 2009, an enlarged panel of the BPAI has created a new test for judging whether a claimed machine (or article of manufacture) that takes advantage of a mathematical algorithm falls within the patentable subject matter requirements of 35 U.S.C. Section 101. The two-part test parallels the Federal Circuit’sBilski decision that focused on the patentablility of method claims. Of course, Bilski is now pending before the Supreme Court and a decision is expected in the Spring of 2010.”

Human translation:  (disclaimer: IANAL)

1) More software patents are going to be rejected by the PTO starting today due to the new test criteria for patentability.

2) You can’t just patent a mathematical algorithm that runs on pretty much any hardware. It must have a specific tangible use (emphasis mine)

3) What you’re trying to patent must be very narrow and tied to the tangible use. Creating a computational algorithm which compresses data using an algorithm could be considered overly broad, for example. (would existing patents such as the LZW patent pass this test? I doubt it!–Ziv–Welch#Patents )

A couple of questions:

1) How does this change the value of patents as IP for venture or M&A purposes?

2) What about the existing software patents which might fail the new tests? (e.g. what does the PTO plan for a transition policy and how will this be implemented?)


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