Some of you may recall my fascination last year with the distinction in software between a license and a sale. I argued that it makes more sense to consider computer program transactions as sales rather than licenses. Well since my post, a lot has changed in the patent-eligibility landscape. The Supreme Court in Bilski went deep into analyzing process patents. Even though the Court sidestepped software, opening it up for a future time, some of the issues it raised with regards to general process claims were quite interesting.
Just the other day I was reading about particular exercises used to optimize the human body in certain ways. True to my patent-law geek form, I immediately thought about the patentability of such exercises as novel techniques. As the dissent in Bilski pointed out, a couple hundred years ago, processes people would not have thought about patenting, are today at least being considered for patentability. Without saying whether this is a good or a bad thing, it is interesting that process patents are finding their own niche in the realm of inventions. This refinement has a long ways to go in terms of defining what a non-patentable process is, such as an abstract idea.
I’d like to take you back to my post about the difference between sales and licenses. If I teach someone else how to do a process in exchange for something in return, is this a sale or a license? It may depend on how the arrangement is set up. According to the MPEP, however, it is per se a license. You see, I’m currently studying for the USPTO registration examination and I just read a section in the patentability section of the MPEP, discussing the 102(b) sale requirement.
A claimed process, which is a series of acts or steps, is not sold in the same sense as is a claimed product, device, or apparatus, which is a tangible item. “‘Know-how’ describing what the process consists of and how the process should be carried out may be sold in the sense that the buyer acquires knowledge of the process and obtains the freedom to carry it out pursuant to the terms of the transaction. However, such a transaction is not a ‘sale’ of the invention within the meaning of §102(b) because the process has not been carried out or performed as a result of the transaction.” In re Kollar, 286 F.3d 1326, 1332, 62 USPQ2d 1425, 1429 (Fed. Cir. 2002). MPEP 2133.03(c) (8th Ed. 4th Rev.)
This simplifies process patents for now, applying a broad brush stroke to all process patents not being sales, but I am predicting that the delineation will soon need to be more precise. Some process patents are gray in their conceptualization and I sometimes like the challenge of exploring gray areas. More to come.