Research Tech, H&R Block, and Bancorp Decisions and Bilski – The Link of Manipulated Data to Something “Real” May Provide the Clue to the Patent Eligibility of Software.

The test for accurately defining the boundary line beyond which software preempts a fundamental idea may lie in defining what data are manipulated by the software instructions.  It is in the “link” of the data to a physical or tangible object that may lie the patentability of software.  Software  that manipulates a real or tangible object does not cross the boundary line of abstractness and so is patentable per Diehr.  The same goes for “virtual links” where the data are representations of a physical or tangible object as in the Fifth claim of Morse.  The link of data to something “real” may provide the clue to the patent eligibility of software.

The Supreme Court has explained that software is patentable while abstract ideas are not.  Bilski¹, Diehr²   Software that does not preempt a fundamental abstract idea is patentable while software that amounts to abstract ideas are not.  Computer hardware will be given weight in the patentability threshold inquiry if the hardware is central to the claim; insignificant post-solution activity is given no weight. See Bilski, Diehr, supra.

With the threshold for software patentability thus clear, the new challenge faced by lower courts is applying that threshold of patentability on a case-by-case basis.  The challenge simply put is where should the boundary line be drawn within which the abstract ideas in software do not preempt a fundamental principle useable by all.  In one after another post-Bilski decision, however, the lower courts have struggled to define this boundary line as evidenced by the “functional and palpable” test in Research Tech ( Federal Circuit)³; the “meaningful limits” test in H&R Block (E.D. TX)⁴; and arguably the “practical applications” test in Bancorp (E.D. MO)⁵.

The absence of a test for defining the threshold for software patentability in a way that is understandable, uniform to apply, and leads to consistent results true to Bilski makes the boundary lines being drawn by these courts no more precise than lines drawn in the sand.  Each is ripe for reversal by the Supreme Court to the extent they exclude/include patentable subject matter.

The test for accurately defining the boundary line beyond which software preempts a fundamental idea may lie in defining what data are manipulated by the software instructions.  It is in the “link” of the data to a physical or tangible object that may lie the patentability of software.  Software that manipulates a real or tangible object (i.e., contains a “physical link”) does not cross the boundary line of abstractness and so is patentable per Diehr.  The same goes for “virtual links” where the data are representations of a physical or tangible object as in the Fifth claim of Morse⁶.  The link of data to something “real” may provide the clue to the patent eligibility of software.  For more on “virtual links” and their use, and on footnoted references (1) through (6) go to Mar 2011 Juhasz Burge PC Advisory – Data Links to Something Real Provides SW Patentability Clues.