Bilski Decision and Patents: Better Than Some Expected
Posted on Wed, Jun 30, 2010
The IP world is overflowing with news and reactions on the Supreme Court's Bilski decision this past Monday. I wanted to take a moment to highlight the analyses of two highly acclaimed IP blogs, and offer my own thoughts. A quote from each follows -- but both are worth reading in their entirety.
Gene Quinn, of IPWatchDog, writes:
Today, after a wait of nearly 8 months the Supreme Court has seemingly got it right, at least based on early analysis. In doing away with the machine or transformation test as the sole test for determining whether an invention is patentable subject matter the Supreme Court has kicked open the door and will not allow it to be closed on new technologies and innovations that we cannot today imagine.
Dennis Crouch, of Patently-O, writes:
Business as Usual: In general, the [Bilski] opinion offers no clarity or aid for those tasked with determining whether a particular innovation falls within Section 101. The opinion provides no new lines to be avoided. Rather, the outcome from the decision might be best stated as "business as usual."
Business Methods: Section 101 does not categorically exclude business methods from patentability.
Software: Although the court expressly refused to rule on the patentability of software, it appears that software will largely remain patentable.
These two posts highlight how the decision maintains the status quo. In my view, while greater clarity on the standard for patentable subject matter would assist the USPTO and the private sector in evaluating their rights and obligations, the decision is better than some expected.
The elimination of business method patents as a class of eligible subject matter would have called into question not only business method patents but also software patents. The ripple effect of such an outcome would have been dramatic. The notion of categorizing classes of patentable subject matter to exclude business methods or software directs the patent system in the wrong direction, away from meritorious inventions which can be evaluated on the basis of advancing the knowledge of the public with previously unknown inventions.
While areas of innovation change over time, from tangible (e.g., during the industrial revolution) to intangible products and services such as software that drive our economy today, the ideal patent system would reward deserving innovation. The public is best served with this opportunity for patent protection and a reduction in the burden of premium pricing and other societal costs of a patent system where patent quality needs to improve. My hope is for clarity on standard and better access to prior art by the USPTO through organizations like Peer-To-Patent.
I also was struck by the following passage in the decision as it applies to the Article One community of researchers.
"This 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 a balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principals. Nothing in this opinion should be read to take a position on where that balance ought to be struck."
Bilski v. Kappos (2010), p10 [download]
The recognition of the patent system as a living system providing rights and obligations that eventually flow to the public is tremendous. Article One's vision is that the public, which both benefits and is burdened by the current system, should be asked to participate in the decision of whether an innovation is worthy of a patent grant.