Reaction to Bilski v. Kappos

    By Donald Zuhn --

The Supreme Court waited until the eleventh hour to issue its long-awaited decision in Bilski v. Kappos, affirming the Federal Circuit's determination that an application directed to hedging risk in energy commodities was not patent eligible while determining that the Federal Circuit's machine-or-transformation test is not the sole test for assessing patent eligibility under 35 U.S.C. § 101 (see Patent Docs report on decision).  Reaction to the Supreme Court's decision in Bilski has, not surprisingly, come much quicker.

In a brief statement posted on the U.S. Patent and Trademark Office website, the Office noted that:

The Supreme Court [on Monday] affirmed the USPTO's decision that Mr. Bilski's invention was not patentable subject matter as his claims were drawn to an abstract idea.  Significantly, the Court ruled that the "machine or transformation" test is not the sole determinant of patent eligible subject matter for process claims, but is nevertheless an important "investigative tool" for evaluating their patent eligibility.  The Court also indicated that a business method is, at least in some circumstances, eligible for patenting under Section 101.

The USPTO will be issuing guidance further interpreting the decision as soon as possible.  The USPTO is distributing interim guidance for the examining corps today.

The Biotechnology Industry Organization (BIO), which along with the Advanced Medical Technology Association, Wisconsin Alumni Research Foundation (WARF), and the Regents of the University of California, submitted an amici brief in the case, issued a press release in which BIO President and CEO Jim Greenwood said the organization was "pleased that the Justices crafted a narrow opinion" in which the Court "overturn[ed] the lower court's rigid new test for determining whether a method or process is eligible for patenting."  Noting that this was the position BIO had advocated for in its amici brief, Mr. Greenwood stated that "[t]he Court was clearly conscious of the potential negative and unforeseeable consequences of a broad and sweeping decision" and "recognized that the lower court's ruling could have created uncertainty in fields such as advanced diagnostic medicine techniques."

Pointing to the Supreme Court's decision in Diamond v. Chakrabarty -- which coincidentally celebrated its thirtieth anniversary on June 16th (see "BIO Celebrates Anniversary of Chakrabarty Decision") -- Mr. Greenwood observed that in that case the Court had "defined patent-eligible subject matter in a flexible and inclusive way that has fostered the tremendous growth of biotechnology for the benefit of millions of patients, farmers, and other consumers around the world."  Mr. Greenwood offered that in Bilski, "the Court made it clear . . . that the patent system was designed to be broad and inclusive in order to promote innovation."

In a release issued by the American Intellectual Property Law Association (AIPLA), the national bar association, which also submitted an amicus brief in the case, said it was "gratified that the Supreme Court in its Bilski decision . . . continues to interpret the Patent Act as open to the broadest range of subject matter, preserving the incentives for yet unknown areas of innovation."  AIPLA Executive Director Q. Todd Dickinson stated that the organization was "generally pleased that the Court's majority today confirmed that broad patent protection is critical to innovation and economic growth," and that "[t]hey recognized that the patentability of next generation technology should not be judged by a last century view of the law."  Mr. Dickinson noted that this was the position that the AIPLA had advocated for in its own amicus brief.  The AIPLA release also notes that "like many others filing amicus (i.e., "friend of the court") briefs, [the AIPLA] believes that excluded subject matter must be kept to a minimum because this is the only way to keep the patent system open to crucial but unforeseen innovations of the future," adding that "because the course of technology can take an unexpected path, the threshold test for patentable subject matter ought not become a barrier to the next life-altering innovation."

The Licensing Executives Society (LES) offered its comments on the "long-awaited" decision in a release issued on Monday.  Noting that "[t]he decision has important implications for industries from health care to high tech," the professional society whose members are engaged in the transfer, use, development, and marketing of intellectual property, said that "[m]any throughout the industry, including a strong representation of our membership, have expressed the view that a rigid application of that test might stifle both innovation and business on a global scale, particularly in the Information Age."  LES Public Policy Chair Brian O'Shaughnessy stated that "[o]verall, we believe the Supreme Court's decision represents an important step towards maintaining a balanced, effective patent system that promotes innovation and opportunity for both inventors and consumers."

Comments

[Skeptical]

"and that "[t]hey recognized that the patentability of next generation technology should not be judged by a last century view of the law."

Disappointing then, it must be that the statement above was only put forth in a four member concurrence, and thus balanced by a four member concurrence who would rather see patent practice thrown back to the time of the founding fathers.

[Gena777]

Indeed, the Bilski ruling is growing on me. Nevertheless, it's pretty easy to see that the issue of defining the limits of an "abstract idea" will likely be the focus of much patent litigation in the near future. I do rather wish that the Court had made more of an attempt to address this. Lacking guidance from above, lower courts will have to address the issue case-by-case, and we'll likely end up with some kind of piecemeal, undefined, "I know it when I see it" means of determining which inventions are too abstract. I wouldn't be surprised if the issue ends up going back up to the Supreme Court again soon -- maybe in Prometheus or Classen.
http://www.generalpatent.com/media/videos/general-patent-gets-results-its-clients