!080294 A guide to software patent court decisions Recently there have been a variety of hearings, court decisions, articles and arguments over the issue of software patents. For non-lawyers, these discussions can sometimes be baffingly, as the lawyers toss court decisions around as if everyone knew what they were referring to. A while ago, thanks to a suggestion, I tracked down an interesting paper to help decipher what the lawyers are referring to. The paper is titled (remember these guys get paid by the word): The strength of patent protection for computer products: the Federal Circuit and the Patent Office refine the test for determining which computer-related inventions constitute patentable subject matter by R. Lewis Gable and J. Bradford Leaheey Rutgers Computer & Technology Law Journal, Volume 17, 1991, 88-137 It is an interesting article (with implicit tips on how to overcome patent examiner complaints when you try to patent software) in providing a brief discussion of the key decisions that the lawyers are always referring to: in re Freeman Parker v. Flook In re Walter Diamond v. Diehr in re Abele the first PTO guidelines in re Grams in re Iwahashi the PTO responds to Iwahashi along with three cases dealing with method of doing business software patents (which in the future will really make the PTO's life miserable): in re Johnson Merrill Lynch ex parte Murray all to be finalized (NOT) in a case decided this year obviously not mentioned in their article: in re Alappat. I found the article quite interesting to read, though this article and many comments of court officials, are seriously deficient in their knowledge of what the PTO is allowing the form of software patents. From the over 14,000 issued software patents as all of the cases were being decided and deliberated, especially the 4500 software patents to be issued this year, it appears few are paying attention to these precedents. For example, in reading the 'in re Alappat' decision decided this July, it is apparent that the Circuit Judges were unaware of many software patents much more trivial and purely software than the Alappat patent. That other examiners allow such patents would strengthen the arguments of the Alappat lawyers that their client was being treated unfairly by the particular PTO examiner involved. While the judges cite many precedents (and lawyers love citing precedents), they cite few if any software patents. Had they been aware of some of these patents, I venture there would have been less dissenting opinions. Anyways your local law library should have a copy of Gable's article. Greg Aharonian Internet Patent News Service