CCIA Applauds Federal Circuit Decisions Limiting Patent Subject Matter

File Under: News, 2007, CCIA

Sep 20, 2007

Washington, D.C. - The Computer & Communications Industry Association today applauded two opinions of the Court of Appeals for the Federal Circuit that limited the scope of patentable subject matter, In re Nuitjen and In re Comiskey.  

“These are landmark decisions, said CCIA President Ed Black.  “Since the Federal Circuit abolished the exclusion for business methods in the 1998 State Street decision, it has often been assumed that there are no limits – that you can patent anything.”

The Comiskey opinion states unequivocally “the application of human intelligence to the solution of practical problems is not in and of itself patentable.” It suggests that tangible technology must be involved – and not just routine computer implementation of new forms of human interaction.  While today’s decisions do not explicitly reverse State Street or other Federal Circuit precedent, both conspicuously cite Supreme Court precedents that the Federal Circuit has paid little attention to in the past.

The long-overdue patent reform legislation that recently passed in the United States House of Representatives, H.R. 1908, did not originally attempt to address the scope of patentable subject.  However, one subject matter issue was addressed by an amendment by Congressman Rick Boucher which precludes patents on certain tax strategies.

“The scope of patentable subject matter remains intensely controversial,” said CCIA Senior Fellow Brian Kahin, “especially in regard to software and business methods, areas where the patent system seems most dysfunctional.  However, the lack of clear limits on subject matter has helped provide full employment to the patent bar and has created a constituency in speculators who are convinced that they own huge swaths of electronic commerce.”

The Supreme Court has recently stepped in, overruling the Federal Circuit on other matters that have proven too divisive for legislative reform.  It unanimously rejected the Federal Circuit’s rule of automatic injunctions for patent owners (eBay v. MercExchange), as well as the Federal Circuit’s low standard of nonobviousness that made patents easy to get (KSR International v. Teleflex).  

Said Black, “we are of course pleased to see that the Federal Circuit is starting to understand the consequences of an unbalanced ideology.”