Bilski and the future of innovation

Inventors take note: the Supreme Court holds the fate of business-method patents

By Gene Quinn

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Just over one month ago the United States Supreme Court listened to oral arguments in Bilski v. Kappos.  The case relates to a patent application that has been rejected by the Patent Office, which relates to what most of us would characterize as a pure business method.

Essentially, the inventor came up with a mental process akin to looking at information, synthesizing the information and acting. Business methods have been largely vilified in the popular press, and it would not be surprising that many have strong feelings that such things should not be patentable.  That may well be what the Supreme Court rules, but there is far more on the line, and all inventors should be concerned and pay attention.

It is not an overstatement to say that the fate of much future innovation rests squarely on the Supreme Court getting the Bilski matter right.  At its core the question before the Court is what is patentable subject matter?  This is a fundamental question and while many in the popular press might like to slur patentable subject matter together with whether an invention should receive a patent, it is not at all that easy.  Patentable subject matter is a threshold inquiry that asks whether the invention in question could receive a patent assuming it is useful, new, not obvious and adequately described.  If the Supreme Court rules something is not patentable subject matter that means regardless of how unique or revolutionary, no patent can be obtained.

The Supreme Court has almost always erred on the side of an expansive view of what is patentable subject matter, and that is why in the United States we can patent living matter, such as a genetically modified bacterium, business methods and software.  The U.S. economy would be dramatically different today if we did not have an expansive view of patentable subject matter.  It is no coincidence that the U.S. dominates in many industries because of our strong patent policies, so at its root this case could well determine whether we continue to broadly recognize patent rights in ever evolving technologies, or whether we cut off avenues of endeavor and potentially unborn industries that could spawn from never before considered technological advances.

It is admittedly at least somewhat humorous to talk in such grandiose terms about a case that deals with a pure business method, but the United States Court of Appeals for the Federal Circuit issued a sweeping decision that Justice Sotomayor kept referring to as “extreme” during oral arguments.  She was, of course, correct.  So extreme was the Federal Circuit Bilski decision that it didn’t just throw away pure business method patents, but brought software, biotechnology methods and diagnostic methods all into question.

The observe, synthesize, act sequence is one extremely common in early stage medical innovations, as was pointed out by Medtronic in a brief filed at the Supreme Court.  Medtronic told the Court the Federal Circuit test, if allowed to stand, “would preclude the patenting of significant advances in medical research and development, diagnosis, prevention, and treatment.”  Medtronic also pointed out that you cannot treat a disease or ailment without diagnosing the disease or ailment, and diagnostic methods typically predate treatment related innovations by years or decades.  So a lot really is riding on this case.

The only time the Supreme Court has not had an expansive view of what could be patentable has been in dealing with software, where the Court has had a checkered past.  At times the Supreme Court has shrugged off methods and processes as “only” relating to a computer. Given that software is the new engine that drives much technology advances today, a death blow to software would no doubt slow the march of innovation and impact many inventors in a wide range of disciplines who are ever increasingly seeking automated or semi-automated solutions.


Eugene R. Quinn, Jr.
US Patent Attorney (Reg. No. 44,294)
President & Founder of IPWatchdog.com

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