As Predicted, RCT Expands Patentability for Software

Thankfully, the Federal Circuit is bringing normalcy back to recent statutory subject matter debates for software and business methods in view of Bilski. As we predicted, the case of RCT v. Microsoft is the first case in which the Federal Circuit has spoken substantively about the Supreme Court’s Bilski decision, and the bar of “abstract idea” invalidity has been raised back closer to where it was for the last 10 years after State Street.

The court noted that the Supreme Court, as was urged in AwakenIP’s Amicus Brief, “did not presume to provide a rigid formula or definition for abstractness,” thus “With that guidance, this court also will not presume to define ‘abstract’ beyond the recognition that this disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter and the statutory context that directs primary attention on the patentability criteria of the rest of the Patent Act.”

Looking at the patents at issue, the court went on to note that “the invention presents functional and palpable applications in the field of computer technology”, referencing the patent specification (as we also predicted would play a role in the decision, based on the oral arguments in this case). The court also stated, “[I]nventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.”

Most importantly, the court did not analyze the statutory subject matter issue in the context of the Machine or Transformation (MOT) test from Bilski. Accordingly, we now appear to have a new test for determining subject matter eligibility, particularly for claims that do not explicitly includes computers/machines or produce transformations.

Of course, this case is not likely to be the last word on patent eligibility. It is only one panel decision, and Microsoft will likely request en banc review. Regardless, other panels are not likely to be as friendly to software and business method patents in the future. Therefore, this case is probably the first in what will be a long string of decisions that try to establish the new test for patentable subject matter.

7 comments to As Predicted, RCT Expands Patentability for Software

  • Not really sure if I understand what the article is saying and currently don’t have the time to dig in.
    However what comes to mind is an analogy of doing some very difficult calculation and claiming property rights due its difficulty. But then what is complex and difficult to do using one methodology/toolset but becomes simple and obvious when using another methodology/toolset… the analogy is the difference between using the Roman numeral system to do simple algerbra, instead of the Hindu-Arabic decimal system, or even pre-algrebra mathematics.

    Interesting how the toolset itself is abstraction based.
    To extend beyond the abstract subset of mathematical symbols…there is Abstraction Physics!

  • vexorian

    Yay for patent trolls!

  • Scott Dunn

    Seems like patentees would like a patent on the claims rather than the method.

  • Renee Jones

    All you are saying is that the CAFC refuses to follow the Supreme Court’s guidance, as always. These judges think that they have the authority to re-write patent law as they see fit according to their own political beliefs. It just means the Supreme Court will have to knock them down again, because this sort of test will bankrupt the country with litigation over absurd patents that could not legally be granted under the actual meaning of the law.

  • [...] CAFC: Section 101 and process claims: Research Corp. v. Microsoft (Patently-O) (Patents4Software) (AwakenIP) [...]

  • [...] Expands Patentability for Software” says this new article about RCT vs. Microsoft. Thankfully, the Federal Circuit is bringing normalcy back to recent [...]

  • anonymous

    What you’re describing is CAFC defiance to SCOTUS. What can anyone say but, go ahead , make my day. Continue defying them. I couldn’t work harder and implement a better strategy for the abolition of software and BM patents. (that’s “business method” , not “bowel movement”. Please. Don’t get the two confused. )