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« Court Report | Main | USPTO Requests Comments Regarding Proposed Changes to Restriction Practice »

June 28, 2010



Kennedy and 4 other SCOTUS justices were very CORRECT that 35 USC 273 is implicit if not explicit recognition that “business methods” (however you characterize them) are patent-eligible subject matter under 35 USC 101 and that Stevens and 3 other SCOTUS justices are completely WRONG in treating 35 USC 273 as if this statute doesn’t exist. I have nothing but contempt for Stevens’ concurrence which is disingenuous, sophistry in the extreme, and has logic, to use my dad’s expression, that “won’t hold soap.” Even Scalia, who obviously doesn’t like patents on "business methods" (by his refusal to join Part II B-2 of Kennedy’s opinion) couldn’t stomach rendering the language of 35 USC 273 a nullity.

Another interesting aspect of Bilski is the impact it will certainly have on AMP v. USPTO which is on appeal to the Federal Circuit. I previously remarked that Judge Sweet was very ill-advised to rely on the Federal Circuit’s “machine or transformation” test to invalidate Myriad’s method claims on the use of the BRCA1 and BRCA2 genes. With the “machine or transformation” test now in tatters after SCOTUS’ decision in Bilski, my prediction that at least this part of Sweet’s ruling is built on a “foundation of quicksand” will soon come true when the Federal Circuit considers AMP v. USPTO.

An invention for training a dog, according to the Court's left wing, would be too "comical" to be patentable subject matter. How unfortunate. Must I now abandon hope that anyone will find a way for me to stop my wire-haired fox terrier from getting up at 6 AM to loudly scratch and sneeze in the bedroom?

The ghosts of Justice William O Douglas and the trust busters ride again! Remember his castigating the eraser on the end of a pencil as an example of undeserving subject matter (tho in the context of obviousness)? That's one of the most useful and successful inventions to have graced the top of my desk, not withstanding Bill Gates and his infernal machines.

As I (slowly) work my way through the concurrences, I admit that some of Steven's points are very insightful. Most, however, fall to an irrational zealotry that borders on the painful. EG's point about the clear abandonment of what Congress actually did in recognizing Business Method patents is simply incomprehensible.

This is fairly worthless opinion in terms of providing useful guidance. I don't know what it accomplished other than to slap around the Federal Circuit one more time. What's an abstract idea? I guess it's like pornography; we're supposed to know it when we see it. Please don’t respond with E=mc2 or some of Stevens’ examples. I’m talking about the real world of patent practice. Okay, some business methods are patentable. Does anyone have any idea what those are?

As to Stevens’ concurring opinion, let's be glad he's no longer on the Court and hope that Kagan will look more favorably on patents.

"Must I now abandon hope that anyone will find a way for me to stop my wire-haired fox terrier from getting up at 6 AM to loudly scratch and sneeze in the bedroom?"

I've never understood the position that if an idea is not patentable, no one will bother inventing and/or marketing it. Is this some weird patent lawyer article of faith? Because it clearly runs counter to the evidence, given the existence of lucrative, unpatented methods such as "The South Beach Diet" and Bikram Yoga.

Dear D:

Correct - there are lots of unpainted methods. But remember, the South Beach diet is (specifically) copyrighted, so there are limits to how exactly it can be copied. And the more difficult a method is to practice, the harder it is to copy.

Thanks for the comment.

Sorry, D - that should be "unpatented methods," of course.

"But remember, the South Beach diet is (specifically) copyrighted, so there are limits to how exactly it can be copied."

But copyright would only provide the South Beach diet with "thin" protection: the creators' particular expression of the diet would be protected, not the process itself, because of the idea/expression distinction. I could go buy a copy of "The South Beach Diet" and then write my own version recommending the same diet plan, as long as I express the plan in my own words. I could even copy all the recipes verbatim, since those are not entitled to any copyright protection at all.

I would argue that, if anything, South Beach succeeds because of trademark protection. Even if my plan were essentially the same, "D's Diet" would fail because it lacks the goodwill associated with South Beach.

The creator of an unprotectable (under patent or copyright) idea will be the first to market in most cases. I would argue that trademark protection for the ensuing goodwill will suffice to allow profitability in many cases — often enough that there's really no justification for a blanket rule providing for the patentability of methods.

Dear D:

Agreed about the trademark aspect.

I'm not sure about the creator of an idea being first to market, especially in view of the experience of simultaneous invention - think interferences in the US - and the different capacities or opportunities to get to market: investment, business acumen, etc. And while trademark can prevail, I don't think there is any reason to eschew patent protection for method claims, so long as they are sufficiently limited in scope not to run afoul of the prescriptions set forth in the Bilski opinion.

Thanks for the comment.

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