It’s been a year since the USPTO issued guidelines stating that the claim “computer-readable medium” should not be statutory subject-matter because viewed in its most broad interpretation, the claim includes transitory embodiments such as signals. And since In re Nuijten held that signals do not fit into a statutory class of subject matter, the claim fails. I already made my thoughts known about this here, but today I wanted to give a report of the aftermath. The BPAI has certainly been busy, and especially since Bilski, in striking down patents related to software. Searching through the BPAI decisions, I found 132 cases that have been decided on the merits of subject matter. Interestingly, these cases are coming through the BPAI on a very regular basis. From the time I first performed my search (two weeks ago) to today, 17 more results appeared. This is definitely a hot topic right now. Software patents seem to be very much alive and well, however, a critical element of claiming computer-program related inventions is what you include in your specification.
While conducting this research, a few things struck me. First, the most common rejection was that there was insufficient limitation in the patent or the claim could be interpreted into non-statutory matter. Second, avoid having your claims get pegged with the label “software per se.” It’s bad. Next, RCT v. Microsoft was finally cited in a most recent BPAI decision. Ex Parte Clifford R. Jack & Peter C. Obrien, 2009-015192, 2011 WL 486179 (Bd. Pat. App. & Interf. Feb. 7, 2011). It appears that the BPAI has finally caught up to this recent and very important Federal Circuit case.
Next, initially after Bilski was decided, there was a trend towards rejecting claims that related to software. This trend seems to be going the other direction (although perhaps there has not been sufficient time to tell) since RCT v. Microsoft. Next, your patent, whether in the claims, or in the specification, needs to require that the invention be limited to some embodiment or on some particular apparatus. The limitation just can’t be construed as including a signal or else your claim is toast. Finally, you can claim a “computer-readable medium” if your specification limits the invention to being performed on a non-transitory medium. Otherwise, game over.
I’ve created a document that organizes the cases into one table. It’s interesting so I’ve made it available for download, in case anyone would like to look at the details. Here is the file: [download id=”2″] The document includes the citation to the decision, the claims at issue, the disposition of the claims, and the representative claim language.
Briefly about how I searched, it was difficult to search for “software patents” because of how unpredictable the wording of a claim might be. One of these days, we’re going to come to a point where you send your computer a telepathic vibe of what you want and a query will then return results for you. But we’re not to that point yet, so I conducted a very broad search of all 101 subject matter cases. Then I refined the search manually. Almost all of the subject matter was computer-related, to my satisfaction. Only a couple cases were purely abstract, involving how to play a game. If you want to perform the search for yourself, I used Westlaw:
advanced:(101 & “subject matter”) & DA(after 06-28-2010).