This is the second article in our preview of upcoming Supreme Court cases. You can read the first one here.
One of the most fascinating cases in the upcoming term is Bilski v. Doll. This case involves a question of how broadly or narrowly the Court should read the laws on what sorts of inventions are entitled to patents.
Patent law is deceptively plain on the question of what can be patented. Basic patent law, which is found in 35 USC §101, mentions four categories of patentable inventions:
- Machine
- Manufacture
- Composition of Matter
- Process
Needless to say, these are pretty broad categories. Machine can encompass anything from a fully automated assembly line for manufacturing tanks to a digital watch. A composition of matter can be a drug, foodstuff, alloy, or building material. But people get a little uncomfortable with the idea of a process being interpreted broadly. After all, most things we do are a process of some sort. Filling out your tax returns is a process. Swinging on a swing is a process. Making a peanut butter sandwich is a process. So how should we distinguish between patentable processes and unpatentable processes? Or should we simply follow the statute as written and allow all processes to be patentable if they meet the other criteria for patentability?
Our story begins in 1998, with a court case called State Street Bank v. Signature Financial Group. In this case, State Street had applied for, and received a patent on, a computer-implemented system to track what equities needed to be bought or sold based on what mutual funds were being bought or sold. Signature Financial Group had a computer program that worked in more or less the same way. State Street then sued for patent infringement.
Prior to State Street, there had been a widespread assumption that “business methods” were per se excluded from patentable subject matter. The so-called business method exception was, in fact, an overgeneralization of prior cases involving attempts to patent known mathematical truths without practical application. The State Street case was a forceful refutation of that idea. It made it perfectly clear that there is no “business method exception”, and inventions that fall into the statutory categories can only be rejected because some other rule prevents the PTO from issuing a patent.
The current case, Bilski v. Doll, involves two “inventors,” Bernard Bilski and Rand Warsaw. Bilski and Warsaw presented the PTO with a patent application for a method of hedging risk in commodities trading. The method they presented did not require use of a computer or any other sort of technology, and they never claimed one was needed. The PTO argued that this lack of a technological component to the “invention” made it not patentable subject matter, and Bilski and Rand argued that they were only required to show their application claimed a process, and that the PTO needed to find other grounds to invalidate their patent requirement.
The Court of Appeals for the Federal Circuit, which is the appellate court that handles appeals of PTO decisions, ruled last year that the State Street decision was bad law. In a fairly unusual move, the CAFC undid its own precedent, changing the “useful, concrete, and tangible result” test that it announced in State Street to a “tied to a particular machine or transforms an article into a different state or thing” test. This so-called “Machine or Transformation” test is already being applied by the PTO with some questionable results.
There are strong policy arguments on both sides of this debate. Advocates of broadly interpreted rules for patentable subject matter point out that since we don’t know where the next major advancement in technology is going to come from, and we should not artificially limit patent rights under those circumstances. After all, with advancements in software not being necessarily tied to any “particular” machine, an entire major branch of technology could be without patent protection. On the other hand, an overly broad understanding of a term like “process” could lead to some truly absurd patents being issued, like patents on tax planning. Needless to say not every series of steps that does something neat is or should be entitled to a patent, but defining rules to separate the wheat from the chaff is much harder than it sounds.
The question of patentability of these sorts of inventions is one that certainly won’t end with a Supreme Court decision in Bilski. If the PTO were forced to use a very broad interpretation of the Machine-or-Transformation test, most critics of the PTO’s recent tightening of its §101 criteria will probably be satisfied. On the other hand, overturning the CAFC decision could leave the Supreme Court in the unenviable position of having to announce a new test that could have even more problems. It seems that no matter what the outcome of this case, it will leave us with many more questions than answers.
More time should be given to decide what type of inventions should be allowed to get patent otherwise there will be loop holes in the process of offering patents.
Are you going to talk about McDonald v. Chicago? I hope so.
Dear Honorable Sir, If intellectual capital is disallowed where would Novels of Fiction, Poems, Paintings, or Music stand since all of these do not involve a machine or apparatus but use the mathematical principles of printing to print copies instead of being handwritten.
Generic or existing algorithms may themselves not be patentable, since conduct of logic is an everyday activity & the conduct of activity involves a certain assembly of logic. But if that logic is marketable as a patentable assembly & sold as a product or service, then the conduct of logic by itself is a product available as a standard, the patent stands.
Many Algorithms may be assembled in huge variety of way & All Algorithms may be assembled in Infinite number of ways, but then a formatted assembly of logic is a product & marketable as a service has only been understood only in the last 35 years unlike physical products, goods or services involving human labour that has been the fortitude of the “earning human” for millenias.
Dear Honorable Sirs, Kindly read Method mania by Latha Jishnu Bangalore Business Standard page 8 Nov 12 2009
Dear Honorable Sir, In the Bilski case, a particular conjecture has been derived from “physical labour” involving years of education & in the Experiment, Observation, Inference & Result being the cornerstone that allows certain qualifications & due practice which is then the logical root to experience as per the ability to absorb, retain, assimilate & then disseminate the same as a service, goods or products. Wherein the above to the point of being qualified may itself be generic & an institutionalized activity whose remunerations may involve a certain amount of fees & may be standardized within the spectrum of qualifications in a certain sphere of science, arts, law, or mathematics, the later part of the activity or conduct in turn depends on the methods defined by experiments, observations, inferences & results which may involve the production of a certain number of goods, products or processes that are termed services
Dear Honorable Sir, The Algorithms may chose to have been written in a number of ways & may still choose to be written in n+1 number of variables, but were written in certain way by Mr. Bilski & found a marketable enough is solely due to Mr. Bernard Bilski & Mr. Rand Warshaw & therefore are patentable
Dear Honorable Sirs, Yet the Most Honorable & Eminent Justices may dictii a certain amount of Algorithms as “Generic” & therefore non-patentable & fothwith more may be added by the USPTO is beyond doubt & to a limit even time or period may be factored. But in the Bilski case, amicus curae for or against notwithstand the patent awarded to Mr. Bilski & Mr. Warshaw should stand.
Regards
Bms
Dear Honorable Sir, If intellectual capital is disallowed where would Novels of Fiction, Poems, Paintings, or Music stand since all of these do not involve a machine or apparatus but use the mathematical principles of printing to print copies instead of being handwritten.
Generic or existing algorithms may themselves not be patentable, since conduct of logic is an everyday activity & the conduct of activity involves a certain assembly of logic. But if that logic is marketable as a patentable assembly & sold as a product or service, then the conduct of logic by itself is a product available as a standard, the patent stands.
Many Algorithms may be assembled in huge variety of way & All Algorithms may be assembled in Infinite number of ways, but then a formatted assembly of logic is a product & marketable as a service has only been understood only in the last 35 years unlike physical products, goods or services involving human labour that has been the fortitude of the “earning human” for millenias.
Dear Honorable Sirs, Kindly read Method mania by Latha Jishnu Bangalore Business Standard page 8 Nov 12 2009
Dear Honorable Sir, In the Bilski case, a particular conjecture has been derived from “physical labour” involving years of education & in the Experiment, Observation, Inference & Result being the cornerstone that allows certain qualifications & due practice which is then the logical root to experience as per the ability to absorb, retain, assimilate & then disseminate the same as a service, goods or products. Wherein the above to the point of being qualified may itself be generic & an institutionalized activity whose remunerations may involve a certain amount of fees & may be standardized within the spectrum of qualifications in a certain sphere of science, arts, law, or mathematics, the later part of the activity or conduct in turn depends on the methods defined by experiments, observations, inferences & results which may involve the production of a certain number of goods, products or processes that are termed services
Dear Honorable Sir, The Algorithms may chose to have been written in a number of ways & may still choose to be written in n+1 number of variables, but were written in certain way by Mr. Bilski & found a marketable enough is solely due to Mr. Bernard Bilski & Mr. Rand Warshaw & therefore are patentable
Dear Honorable Sirs, Yet the Most Honorable & Eminent Justices may dictii a certain amount of Algorithms as “Generic” & therefore non-patentable & forthwith more may be added by the USPTO is beyond doubt & to a limit even time or period may be factored. But in the Bilski case, amicus curae for or against notwithstanding the patent awarded to Mr. Bilski & Mr. Warshaw should stand.
Regards
Bms