Is Software Patentable? A Look at How the Patent Office Answers the Question

The landmark U.S. Supreme Court decision of Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010), failed to provide a clear test for patentable subject matter.  That was over a year-and-a-half ago.  Are there now, I wondered, any trends or rules one could discern from Patent Office practice in the wake of Bilski?  Can an inventor with a software-related invention be given any clear guidance as to whether that invention passes muster under the patent statute?

I reviewed over 150 recent decisions, from June 2010 to the present, addressing appeals of a patent examiner’s rejections to the Patent Office’s Board of Appeals and Interferences.   Bilski may have made obtaining a software patent more difficult, but it is far from impossible.  Consider the numbers:

New grounds of rejection entered:

29%

Affirmed:

55%

Reversed:

21%

Affirmed and Reversed:

5%

In almost 85% of the cases where the Patent Office judges confronted the issue of whether a claim recited patentable subject matter, they decided it did not.  (Note that 5% of the decisions reviewed are double-counted in the “affirmed” and “reversed” categories, which is why the percent column adds up to more than 100.)   This number is both informative and deceptive.  Clearly, following Bilski, software (and so-called business methods) claims are under strict scrutiny.  These claims do not enjoy the easy presumption of patentability they once had.

And yet, let's dive into the numbers.  Most if not all of the patent claims considered in these cases were drafted and appealed before the Supreme Court's Bilski decision (and in some cases even before lower court decisions in that case).  That is, future patent applicants will undoubtedly adjust their claims to address Bilski, which the applicants included in the foregoing statistics did not have the opportunity to do.  Likewise, patent examiners will be more likely to make patentable subject matter rejections in the future, making it more likely that such issues will be resolved before appeal, and less likely that the Board will enter new grounds of rejection that allege on patentable subject matter.

Thus, for better or worse, one can only concluded that software patents are alive and even relatively well in the Patent Office.  In a future post, I will examine specific examples of claims accepted or disapproved by the Patent Office in an attempt to further insight into this conclusion.  And in yet another future post we will take a closer look at how software patents have fared with the courts following Bilski.

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