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June 29, 2010

Disheartening [9:55 am]

There’s at least the hope that the Court’s eventual definition of what constitutes a patentable business method will be hugely restrictive but, as the NYTimes article concludes, for the moment this decision can easily be construed as part of the Obama Economic Stimulus Package for patent attorneys: Justices Take Broad View of Business Method Patents [pdf]

The door to the patent office should remain open to those who create methods of doing business, the Supreme Court said in a long-awaited decision announced on Monday.

Many legal analysts had anticipated that the court would substantially narrow the rules regarding patents on business methods. The questions the justices raised during oral arguments in November made it clear that several were skeptical of the course of modern patent law.

[...] The decision, however, closed off no options to patent seekers, though the justices unanimously declared that the process at issue in the case could not be patented.

The decision, Bilski et al. v. Kappos, seems to have turned on the narrow refinement and then application of the “machine-or-transformation test”, but I’m not done reading.

First, we have the assertion that the machine or transformation test is only an instrument for investigating the “process”-status of a claim:

This Court’s precedents establish that the machine-or-transformation test is a useful and important clue, aninvestigative tool, for determining whether some claimed inventions are processes under §101. The machine-or-transformation test is not the sole test for decidingwhether an invention is a patent-eligible “process.”

Ok - fine and good. But, this subsequent assertion is fundamentally inconsistent:

[The Information] Age puts the possibility of innovation in the hands of more people and raises new difficulties for the patent law. With ever more people trying to innovate and thus seeking patent protections for their inventions, the patent law faces a great challenge in striking the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles. Nothing in this opinion should be read to take a position on where that balance ought to be struck.

This is different, to me. After all, I would argue that *all* patents, by definition, “[grant] monopolies over procedures that others would discover by independent, creative application of general principles.” That’s the whole point, I thought — that’s why you get a patent instead of relying upon trade secret law. So, this looks like the beginning of where the argument gets muddled.

And, as an engineer, I am sad that the Court elects to rely upon a dictionary for its definition of a “process” — and one from 1954 at that!

See, e.g., Webster’s New International Dictionary 1548 (2d ed. 1954) (defining “method” as “[a]n orderly procedure or process … regular way or manner of doing anything; hence, a set form of procedure adopted in investigation or instruction”).

Note that Justice Stevens’ concurring decision starts his challenge to the majority opinion’s choice not to simply reject business method patents altogether with the following:

Before explaining in more detail how I would decide this case, I will comment briefly on the Court’s opinion. The opinion is less than pellucid [Ed: nice!!] in more than one respect, and, if misunderstood, could result in confusion or upset settled areas of the law. Three preliminary observations may be clarifying.

First, the Court suggests that the terms in the Patent Act must be read as lay speakers use those terms, and not as they have traditionally been understood in the context of patent law. [...] As I will explain at more length in Part III, infra, if this portion of the Court’s opinion were taken literally, the results would be absurd: Anything that constitutes a series of steps would be patentable so long as it is novel, nonobvious, and described with specificity. But the opinion cannot be taken literally on this point. [...]

Second, in the process of addressing the sole issue presented to us, the opinion uses some language that seems inconsistent with our centuries-old reliance on the machine-or-transformation criteria as clues to patentability. Most notably, the opinion for a plurality suggests that these criteria may operate differently when addressing technologies of a recent vintage. [...]

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