It's up to Congress to write the original laws. They already did. It's up to the judicial branch to decide whether those laws preclude software patents. They already did: http://ourdoings.com/ourdoings-startup/2011-07-28
Caveat: They did opine that Congress should clarify this particular question. However, decades of inaction by Congress must be interpreted as their acceptance of the Supreme Court opinions as good law, not in need of legislative clarification.
Now it's up to the executive branch to direct the patent office to obey the law.
Sorry about not replying to you on the other thread a few days ago. I haven't been keeping up with HN regularly and forgot to check whether you had replied to my comment.
I think you are badly misinterpreting how the courts work. The Federal Circuit did not overrule Benson or Flook, even if Justice Stevens disliked their interpretation thereof in Diehr. Nor did the Supreme Court write off State Street or Appalat as bad precedent in the Bilski decision. When Bilski was before the Federal circuit, it rejected his claim and also narrowed its earlier criteria for patentability substantially. The Supreme Court affirmed the Federal Circuit's judgment that Bilski's business method was not patentable, but said that the extremely narrow 'machine or transformation' test identified by the Federal Circuit was too narrow, and would exclude many patentable inventions while seeking to exclude unpatentable ones.
Now, you're talking about this bit, I think: And nothing in today's opinion should be read as endorsing interpretations of § 101 that the Court of Appeals for the Federal Circuit has used in the past. See, e.g., State Street, 149 F.3d, at 1373; AT & T Corp., 172 F.3d, at 1357. (Bilski v. Kappos at 3231) Is this right? If not, ignore the following.
They're not saying those earlier decisions are bad precedent. They're warning people against interpretations of the form 'the enemy of my enemy is my friend.' You're reading it as a binary: they're not endorsing something, therefore they must be against it. but non-endorsement does not equate to condemnation. Their point is that they are not passing judgment on those earlier decisions at all, and it would be a mistake to look for an implicit endorsement of those decisions in the case they were judging at the time.
It's important to understand that courts don't like to settle open legal questions if they don't need to, and they definitely don't want to do it by expanding the scope on their inquiry. Why? Because that would put them on a collision course with Congress, and the judiciary is less powerful than Congress. The Courts could lose some of their existing powers if they exercised them too freely. So what a court much prefers to do when presented with a knotty problem (like the state of patent law) is to either throw the ball back into Congress's court, or to wait until a case comes to them where the issues are clear and well-defined. In the latter situation, the Court can make a straightforward argument that it is exercising its legitimate function of deciding the answer to a question that has been brought before it. The court does not want to look like it's asking questions of its own. So another way to read the non-endorsement statement above is 'don't anyone get the idea that we are trying to usurp Congress and articulate a new law here, because we're not.'
Thanks for replying; you have no obligation to keep up with HN or respond quickly.
Overrule may be the wrong word for what the Fed Circuit did, but in Alappat they said that a program changes a general-purpose computer into a special-purpose machine. Apply that legal principle to the facts in Benson and you get the opposite result from what the Supreme Court said. Like the dissent in Alappat said, it was inconsistent with precedent. The special-purpose machine idea was so far out there that I don't think anybody believed they really meant it until they reiterated it in State Street.
Abbreviated quote: The en banc court rejected its prior test...see, e.g., State Street...holding instead that this “machine-or-transformation test” is the sole test for determining patent eligibility of a “process” under
§101, the court applied the test and held that the pplication was not patent eligible.
Held: The judgment is affirmed. [end abbreviated quote]
The Syllabus makes it sound like they're actually positive on this test, at least for processes, and that the lower court made the right decision to use it as the sole test and ignore, e.g. State Street. (The Fed Circuit also mentioned Alappat specifically.)
It does get more confusing once you get past page 1, and I see where Kennedy says what you say about the non-exclusivity of the machine or transformation test.
However, I do see a lot of endorsement of paying attention to Benson, Flook, and Diehr. Combine that with the explicit non-endorsement of State Street and I think it's clear what the Patent Office should pay attention to. Software patents today if evaluated according to the precedent in Flook would generally be rejected.
