There may have been many important reasons for Dr. Geim did not seek a patent on graphene, but lack of funds and/or intimidation by a large corporation should not have been either of them.
He was a member of the faculty of the University of Manchester at the time he developed graphene. They routinely file patent applications on inventions made by their faculty and would have borne the full cost. They also have a formal technology transfer office, “University of Manchester Intellectual Property Ltd”, so they would have been fully aware that the threatening remarks by the large corporation were meaningless. Technology transfer officers of major universities know how to license patents and enforce them effectively, no matter how large or how many patents an infringer has.
The Bilski decision affirmed that if a process satisfied the “machine or transformation” test, then it was patentable subject matter. The court did not elaborate, however, on what the “machine test” exactly was. It said that would have to wait until more test cases were placed before it.
<a href= http://scholar.google.com/scholar_case?case=2277797231762274855&q=bilski+kappos&hl=en&as_sdt=8003> "This Court's precedents establish that the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under 35 USC 101."</a>
In the meantime, the USPTO has taken the position that a process running on a computer passes the machine test, as long as the machine is not merely doing “insignificant post solution activity”. The current debate being worked out at the Board of Patent Appeals and Interferences is just what is “insignificant” post solution activity. The Board is taking a more conservative view since the Bilski decision. Skilled patent attorneys and agents, however, are usually still able to draft acceptable claim language, but some cases are getting stuck in multiple rounds of rejection. I suspect that one or more of these will get appealed back up to the Supreme Court.
If you have a specific area of software you are concerned about, I would be happy to point you to a few examples of what has been allowed since the Bilski decision.
Authored Comments
There may have been many important reasons for Dr. Geim did not seek a patent on graphene, but lack of funds and/or intimidation by a large corporation should not have been either of them.
He was a member of the faculty of the University of Manchester at the time he developed graphene. They routinely file patent applications on inventions made by their faculty and would have borne the full cost. They also have a formal technology transfer office, “University of Manchester Intellectual Property Ltd”, so they would have been fully aware that the threatening remarks by the large corporation were meaningless. Technology transfer officers of major universities know how to license patents and enforce them effectively, no matter how large or how many patents an infringer has.
The Bilski decision affirmed that if a process satisfied the “machine or transformation” test, then it was patentable subject matter. The court did not elaborate, however, on what the “machine test” exactly was. It said that would have to wait until more test cases were placed before it.
<a href= http://scholar.google.com/scholar_case?case=2277797231762274855&q=bilski+kappos&hl=en&as_sdt=8003> "This Court's precedents establish that the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under 35 USC 101."</a>
In the meantime, the USPTO has taken the position that a process running on a computer passes the machine test, as long as the machine is not merely doing “insignificant post solution activity”. The current debate being worked out at the Board of Patent Appeals and Interferences is just what is “insignificant” post solution activity. The Board is taking a more conservative view since the Bilski decision. Skilled patent attorneys and agents, however, are usually still able to draft acceptable claim language, but some cases are getting stuck in multiple rounds of rejection. I suspect that one or more of these will get appealed back up to the Supreme Court.
If you have a specific area of software you are concerned about, I would be happy to point you to a few examples of what has been allowed since the Bilski decision.