USPTO: Here are some ideas for your guidelines

The US patent office (USPTO) is asking for patent granting guidelines after the Supreme Court had a chew at their machine or transformation -test. Here is what I would suggest the USPTO should do to get rid of "abstract ideas" as the constitution stipulates. The problem is urgent with the terrible quality of software patents issued and used. A new paper concludes that the survival rate of software patents that go to court is below 15%! At the core of the problem we have the problem that software is inherently abstract.

Here are some ideas for the guidelines:

1. Publication should never be an infringement. Information is the most abstract matter.
   Yet USPTO allows claims for "record on a carrier". Thats absurd!
2. Patents should not be allowed to claim generic computations and use of software. It means:
   - That a computerized anti-brake-system can be patented, as long as the merits lie outside the abstracts of software. Using software does not add to the invention.
   - That optimizing calculation steps or memory use are abstract matters, just as with pen and paper.
3. Execution of software is abstract for generic computers. By extension, running software cannot constitute a patent infringement alone. The same also applies to interaction, interoperability and communication with software. It also applies to compression, networking, business and virtualization in software however real world related the variables might be.

So in terms of the questions USPTO asked:


1. What are examples of claims that do not meet the machine-or-transformation test but nevertheless remain patent-eligible because they do not recite an abstract idea?

There are no such claims that we can think of. But if someone would for instance interpret software as a specific purpose machine, then the test would be quite broken. Obviously such a claim would cover publication of software, where information/instructions/software is clearly abstract matter protected under copyright.  

2. What are examples of claims that meet the machine-or-transformation test but nevertheless are not patent-eligible because they recite an abstract idea?

There could be cases where the "claim as a whole" would be mainly about abstract matter. 

3. The decision in Bilski suggested that it might be possible to “defin[e] a narrower category or class of patent applications that claim to instruct how business should be conducted,” such that the category itself would be unpatentable as “an attempt to patent abstract ideas.” Bilski slip op. at 12. Do any such “categories” exist? If so, how does the category itself represent an “attempt to patent abstract ideas?”

I would say that US Patent Class 705 "Business methods and data processing" is quite clear cut for in this aspect. Perhaps the entire 700 class "DATA PROCESSING: GENERIC CONTROL SYSTEMS OR SPECIFIC APPLICATIONS".

Another way would be to look at what the European Patent Convention deems as abstract matters in their exclusion list under Article 52(2) :"in particular 1. discoveries, scientific theories and mathematical methods; 2 aesthetic creations; 3schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; 3 presentations of information."
More examples of abstract ideas is not a bad, but we need to put the machine-or-transformation test to the test some more to see if they are necessary. I think its a good test to start with. 

References:

Swpat.org page about the consultation - last day!

Techdirt on courts rejecting more software patents than other patents.

Abstract patents in the recent Microsoft vs SalesForce case.

Abstract patents in the recent Apple vs HTC case.

Abstract patents in the recent Oracle vs Google case.

Are there any "good" software patents. (work in progress)