“To patent or not to patent” was the question that the US Supreme Court faced back last year when reviewing the so-called Bilski case. The Court has started to hear a number of patent cases in the past few years. Some, such as the Bilski case, are probably taken to see if the Court can find some sense in the diametrical positions held by advocates and opponents of software and business method patents.
Back in November when the Bilski decision was issued – and which has been extensively commented here and here – the Supreme Court clearly said as long as the patent fulfils one of the categories set out in Section 101 of the 1952 Patent Act (i.e. process, machine, manufacture or composition of matter), then the patent was fundamentally acceptable. It was only if the patent application related to a “law of nature”, a physical phenomenon, or an “abstract idea” would a patent be refused.
The Court in Bilski refused to define a “bright line” test for an unpatentable abstract idea. Instead the Supreme Court said that the lower courts should develop “other limiting criteria”.
So it was with some interest that lower court – in this case the Court of Appeals for the Federal Circuit – took on a case relating to patents on the processing of digital images (more accurately digital image halftoning). In RCT v Microsoft, the lower Arizonan Court had held that some of the claims in the patents were invalid as being too abstract. The CAFC said that was incorrect. The CAFC refused to define abstract but said that “this disqualifying characteristic should exhibit itslf so manifestly as to override the broad statutory categories of eleigble subject matter. In other words the patent had to be so obviously “abstract” that it should never be granted. A somewhat rudimentary, but probably practical, test.
What was more interesting was the CAFC’s observation that the claimed methods in these patents (held by RCT) incorporated algorithms and forumulas. These algorithms and formulas, even though admittedly a signficiant part of the claimed combination, did not bring this invention even close to abstractness. Since, as the CAFC noted, the Supreme Court had already made it abundantly clear that inventions incorporating and relying upon even a well known mathematical equation do not lose eligibility because serveral steps of the rpcoess use that mathermatical equation.
This is clearly good news for many innovators seeking patent protection. Once again the US has emphasised: you cannot get patent protection for an abstract idea. But once you use the abstract idea (algorithm) for a practical purpose, then patent protection opens up.