"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," Duffy writes. " 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."
Fearing that the reasoning employed by the PTO in the above cases threatens to undermine the stability of the patent process as it currently is understood, Duffy says that the crucial question for patent applications going forward may be whether the "general purpose computer qualifies as a “particular” machine within the meaning of the agency’s test."
According to Duffy, Google's PageRank patent fails the tests imposed by the recent rulings, including first part of the government’s test that recognizes the patentable eligibility for processes that result in a physical transformation of an article.
"Google’s PageRank process seems to fail that part of the test, for the process merely generates a set of scores (which are merely numbers) that are then used to score or rank documents," Dufy says.
More importantly, the PageRank process also fails the crucial second part of the test.
"Unlike the patent claim in Bilski, which was not limited to machine implemented hedges, Google’s PageRank patent claim expressly states that it is “computer implemented.” But the government’s test does not merely require a connection to a machine; it requires a tie to a particular machine," he writes.
According to Duffy's calculations, not only Google's but a host of other patents central to the operations of several major corporations are possibly at risk.
"... the PTO Board has provided the foundation for rejecting and invalidating huge swaths of software patents, including... those of Google, Microsoft, IBM and many other companies," he says, concluding, "Vast industries of modern innovation must now wait to see whether the courts will follow the agency’s lead."