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SOFTWARE PATENTABILITY Is Software Patentable? Yes and no. If so, they are filed as utility patent applications.  Copyright registration of computer programs is also available, but there are practical considerations involving reverse engineering that militate against copyright registration until a lawsuit is anticipated. Non-Patentable Software.  The software code, constituting a computer program, is not patentable.  When the claimed invention is directed just to a program listing, the software is not patentable. For example, claims drawn to a data structure are not patentable, nor are the algorithms or mathematical operations embodied in the software.  Inventions involving this subject matter are often referred to as involving nonfunctional descriptive material (the computer program), and are rejected as unpatentable. The United States Patent and Trademark Office Board of Patent Appeals and Interferences said in an October 4, 2007 decision, "Nevertheless, there is no authority that we know of which permits software per se to be considered statutory within 35 U.S.C. § 101.  (Ex Parte Siew Hong Yang-Huffman, Appeal 2007-2130). Patentable Software.  The U.S. Court of Appeals for the Federal Circuit recently decided In re Bilski, 2007-1130, slip op. (Fed. Cir. Oct. 30, 2008) on patentable subject matter.  The decision sets out a two-prong "machine-or-transformation" test for patent-eligible subject matter and this test is "the governing test . . . for determining patent eligibility of a  process. . .” (Id., slip op. at 15)." "A claimed process is surely patent-eligible subject matter under § 101 if: "(1) it is tied to a particular machine or apparatus, or "(2) it transforms a particular article into a different state or thing." (Slip op. at 10). Another limitation is that the claims must "not pre-empt all uses of a fundamental principle in any field but rather is limited to a particular use, a specific application." Slip op. at 16. The thing transformed must be "representative of physical objects or substances." (Id., slip op. at 28).  Citing the Supreme Court, the Bilski decision reiterates: "[t]ransformation and reduction of an article 'to a different state or thing' is the clue to the patentability of a process claim that does not include particular machines."  (Id., slip op. at 13) And, simply "adding a data-gathering step to an algorithm is insufficient to convert that algorithm into a patent-eligible process." (Id., slip op. at 26).  But, transforming data into a visual depiction is sufficient to meet the test.  The Bilski decision affirms a prior decision holding: "the electronic transformation of the data itself into a visual depiction in Abele was sufficient; the claim was not required to involve any transformation of the underlying physical object that the data represented."  (Id., slip op. at 26). Simply adding a computer may not meet the test because "the use of a specific machine or transformation of an article must impose meaningful limits on the claim's scope to impart patent-eligibility."   (Id., slip op. at 24).  Rather, "the recited machine or transformation must not constitute mere "insignificant postsolution (sic) activity"  (Id., slip op. at 16-17). Particularly vulnerable inventions involve adding a computer for what might otherwise be performed in the mind of an individual.  For example, "a claimed process wherein all of the process steps may be performed entirely in the human mind is obviously not tied to any machine and does not transform any article into a different state or thing. As a result, it would not be patent-eligible under § 101."  (Id., slip op. at 23). SOFTWARE AS A PRODUCT OR A PROCESS Process Or Product.  When a computer program is claimed in a process where the computer is executing the computer program’s instructions, the claim is a process claim.  When a computer program is recited in conjunction with a physical structure, such as a computer memory, the claim is a product claim. SOME SOFTWARE PROCESSES NOT PATENTABLE Processes That Are Not Patentable.  Not every process involving software is patentable.  Claims drawn to a process that manipulates only numbers, abstract concepts or ideas, or signals representing any of the foregoing are not patentable. However, if a practical application is claimed, then the invention may be patentable. The Bilski decision, discussed above, also confirmed that business method claims are "subject to the same legal requirements for patentability as applied to any other process or method."  (Id., slip op. at 22).  See the business methods page for related information. APPLICATION MUST TEACH Description Requirements.  The specification for a software patent must inform a person skilled in each art how to make and use the invention without undue experimentation.  EUROPE AND CHINA DISTINGUISHED FROM UNITED STATES ON SOFTWARE PATENTS Technical Character.  European law limits patentable subject matter for computer-implemented inventions to those having a "technical" character.  The invention must solve a technical problem and be subject to industrial application.  "Technical" is not defined by the European Patent Office and its definition may vary by the individual countries in Europe.  A July, 2005 attempt to harmonize the definition failed in the European Parliament.  For the European Patent Office, technical inventions involving software typically include those that control a physical, chemical, or biological process found in nature.  Inventions that employ data processing to model a physical, chemical, or biological process may also be patentable.  When the invention is involved in such modeling, the invention will be often be found to be "technical" in character if it improves computer/user interfaces; improves data transmission or processing by a method of encoding; improves the confidentiality of data by encryption; compresses data to reduce the transmission requirements; error corrects data transmission; and proves authenticity using digital signatures. This "technical" criteria essentially eliminates patentability of inventions employing computer programs that solve business problems.  Unlike the U.S., Europe prohibits patents for computer-implemented inventions involving business methods. Similarly, the People's Republic of China will not issue a patent for software unless it is combined with a computer or is part of a process intended to provide a technical solution to a problem in an industrial field.  See Rule 18 of China's patent implementing regulations.       Home | How to Communicate | Email to: lventre@lventre.com | Useful Links Client Inventions | Bio | FAQs | Disclaimers Search Click Here to Fill-In a Web Form Email © 2006 Louis Ventre, Jr. This file last modified 03/01/09. This page is http://www.lventre.com/software.html.