It’s fairly safe to say: 1) patent law is a mess, 2) patent law is in transition, and 3) newer court rulings are reducing the rights of patent holders. But in a very provocative argument, based on recent cases, the PatentlyO law blog argues that new rules and tests imposed by courts (though not yet the US Supreme Court) could effectively eliminate software patents.

The article uses Google PageRank as the example, but the logic would equally apply to all software patents. Here’s the critical summary of the new rules: In a series of cases including In re Nuijten, In re Comiskey and In re Bilski, the Patent and Trademark Office has argued in favor of imposing new restrictions on the scope of patentable subject matter set forth by Congress in §101 of the Patent Act. In the most recent of these three—the currently pending en banc Bilski appeal—the Office takes the position that process inventions generally are unpatentable unless they “result in a physical transformation of an article” or are “tied to a particular machine.”

Software essentially wouldn’t qualify under these tests. It wasn’t until the 1981 that software could be patented at all. Prior to that the US Patent & Trademark Office refused to offer patent protection to “mathematical algorithms” (computer software).

It’s important to note that none of the cases discussed above are US Supreme Court cases and thus not ultimately determinative of whether software patent protections will be effectively voided. I would imagine that the Supreme Court would not go as far as the Patently O article implies. However, the Court does seem quite willing to restrict the scope of patent protection and has done so recently, for example, in the case of Quanta Computer, Inc. v. LG Electronics, Inc., decided in June of this year.

As the article suggests, the combined impact of these cases may be radical and effectively void all or most software and algorithm patents. That would be a very mixed blessing for everyone.

I don’t believe it will get to that point (though I’m not a patent expert), but we’re clearly in an era where the US PTO and federal courts are trying to reign in and clean up what they perceive to be an unwieldy system.

Related Topics: Legal: Patents

About The Author: Greg Sterling is a Contributing Editor at Search Engine Land. He writes a personal blog Screenwerk, about SoLoMo issues and connecting the dots between online and offline. He also posts at Internet2Go, which is focused on the mobile Internet. Follow him @gsterling. See more articles by Greg Sterling