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788 SIEGEL & SUCHENEK ON THE SOFTWARE PATENTING CONTROVERSY 789

may focus only on the most important of such steps; based instead on the fact that a patent for the inven- possibility for patents related to software, so long court’s ruling was considered by many the last nail
code and software, by definition, must be in a form tion in question would preempt an abstract idea. as they were parts of otherwise patentable inven- in the coffin of software patents.
that is understandable to the computer and must be In this paper, we will review some arguments for tions or processes. In that case, the Court ordered The machine-or-transformation test, according
complete. and against software patents. the USPTO to grant a patent to a method for cur- to Stefania Fusco, is defined as follows:
In the early days of computer technology, the ing rubber, in which the only use of software was to In United States patent law, the machine-or-trans-
U.S. Patent and Trademark Office (USPTO) rou- THE CURRENT LAW time the heating process. As a result, many software formation test is a test of patent eligibility under
tinely refused patents on inventions with software Article I, Section 8 [8] of the U.S. Constitution programs have since been granted patent protec- which a claim to a process qualifies to be consid-
components. This informal policy was formalized (Powers of Congress) states: “The Congress shall have tion, including the RSA public-key cryptography ered for patenting if it 1) is implemented with a
into regulation in 1968 when the USPTO issued Power […] To promote the Progress of Science and algorithm in 1983, the Lempel-Ziv-Welch data com- particular machine, that is, one specifically devised
new guidelines in which computer programs were useful Arts, by securing for limited Times to Authors pression algorithm in 1985, and Karmarkar’s linear and adapted to carry out the process in a way that
expressly declared to be unpatentable. and Inventors the exclusive Right to their respective programming algorithm in 1988. In turn, a number is not concededly conventional and is not trivial;
In 1998, the U.S. Court of Appeals for the Federal Writings and Discoveries.” of individuals (some of them prominent scientists) or else 2) transforms an article from one thing or
Circuit in the case State Street Bank and Trust Co. This provides the Constitutional basis for the U.S. and organizations launched their advocacy against state to another. (2)
v. Signature Financial Group ruled that if software patent law (Title 35 U.S.C. § 101, Inventions patent- software patents.
yielded “a useful, concrete, and tangible result,” then able): “Whoever invents or discovers any new and In 1998, the U.S. Court of Appeals for the Federal However, in 2010, the U.S. Supreme Court, in the
it should be considered patentable. This ruling greatly useful process, machine, manufacture, or composi- Circuit in the case State Street Bank and Trust Co. case of Bilski v. Kappos, partially reversed the Federal
facilitated patenting of computer software. But, at the tion of matter, or any new and useful improvement v. Signature Financial Group ruled that if software Circuit’s decision and rejected the machine-or-trans-
same time, it invigorated those opposed to the idea. thereof, may obtain a patent therefor, subject to the yielded “a useful, concrete, and tangible result,” then formation test as the sole criterion of patentability.
The year 2007 marked the beginning of a rever- conditions and requirements of this title.” § 100 of it should be considered patentable. This ruling greatly Although the Supreme Court still ruled against the
sal of the trend that made many software patents that Law defines “process” as “process, art or method,” facilitated patenting of computer software. But, at granting of a patent for the said invention, the deci-
possible. The U.S. Court of Appeals for the Federal including “a new use of a known process, machine, the same time, it invigorated those opposed to the sion was not against the general patentability of any
Circuit said in an opinion that if the invention con- manufacture, composition of matter, or material.” idea. The emergence and proliferation of so-called algorithm or a business process that failed the said
sisted of a process that was entirely mental, then it Since a computer program (or an algorithm) “patent trolls”— usually, law firms that specialized in test but was based instead on the fact that a pat-
was unpatentable even if it was augmented with a clearly falls into category “process” so defined, one buying a wide variety of patents solely for the pur- ent for the invention in question would preempt an
modern electronic device such as a computer. In what could argue that in light of the patent law, software pose of subsequently suing manufacturers for patent abstract idea (this phrasing is a standard criterion
later became a highly-publicized case, a patent exam- should be patentable. But the question of software infringements — also fueled growing discontent with of non-patentability of an invention). As a result of
iner rejected the patent application for an algorithm patentability turned out to be much more compli- the legal post-1998 status quo. these two rulings (in 2008 and 2010), the USPTO
that minimized risks in commodities trading “on the cated than the Section 8 [8] and § 101 seem to suggest, The year 2007 marked the beginning of a rever- pursued a policy of refusing a patent to any com-
grounds that the invention is not implemented on a and for the last few decades has been hotly debated sal of the trend that made many software patents puter program (referred to as a “method”) that failed
specific apparatus, merely manipulates an abstract and a subject of considerable controversy. Over the possible. The U.S. Court of Appeals for the Federal the machine-or-transformation test “unless there is a
idea, and solves a purely mathematical problem.” years, the courts have weighed in on that question Circuit said in an opinion that if the invention con- clear indication that the method is not drawn to an
That decision was challenged. In 2008, the U.S. Court with evolving, if not contradictory, interpretations of sisted of a process that was entirely mental, then it abstract idea.” This has been a more stringent crite-
of Appeals for the Federal Circuit in the case In re the noun “process” in the context of its patentabil- was unpatentable even if it was augmented with a rion than the “useful, concrete, and tangible result”
Bilski upheld that rejection, based on the so-called ity, inventing new tests and criteria that, perhaps, modern electronic device such as a computer. In what test, thus making software patenting substantially
machine-or-transformation test for patentability, clarified some relevant issues but left others more later became a highly-publicized case, a patent exam- more difficult than it was in the years 1998 to 2007.
which, in the Court’s opinion, the algorithm did not complicated and confused than they were before. iner rejected the patent application for an algorithm Nevertheless, the Supreme Court was careful to
pass. Since most computer programs were also likely that minimized risks in commodities trading “on the not comment on software patentability, solely point-
to fail that test, many considered the Court’s ruling THE CONTROVERSY grounds that the invention is not implemented on a ing out the difficulties that the Information Age raises
the last nail in the coffin of software patents. In the early days of computer technology, the specific apparatus, merely manipulates an abstract for the patent law. Wrote Justice Kennedy:
However, in the 2010 case of Bilski v. Kappos, the USPTO routinely refused patents on inventions with idea, and solves a purely mathematical problem.” It is important to emphasize that the Court today
U.S. Supreme Court partially reversed the Federal software components. This informal policy was for- That decision was challenged. In 2008, the U.S. Court is not commenting on the patentability of any
Circuit’s decision and rejected the machine-or-trans- malized into regulation in 1968 when the USPTO of Appeals for the Federal Circuit in the case In re particular invention, let alone holding that any
formation test as the sole criterion of patentability. issued new guidelines in which computer programs Bilski (the source of the previous quote) upheld that of the above-mentioned technologies from the
Although the Supreme Court still ruled against grant- were expressly declared to be unpatentable. rejection, based on the so-called machine-or-trans- Information Age should or should not receive pat-
ing of a patent for the said invention, the decision Software-related patents became a controversial formation test for patentability, which, in the Court’s ent protection. […] [T]he patent law faces a great
was not against general patentability of any algorithm issue after the U.S. Supreme Court decision in the opinion, the algorithm did not pass. Since most com- challenge in striking the balance between protect-
or a business process that failed the said test but was 1981 case of Diamond v. Diehr opened a narrow puter programs were likely to fail that test too, the ing inventors and not granting monopolies over