Federal Circuit Rethinks Scope of Patentability:
The Federal Circuit has handed down its much-awaited en banc decision in In Re Bilski on the scope of patentability. This is a huge case for patent law. Based on a very quick skim, I think the CAFC got it right. For a summary of the new case, check out this post at Patently-O.
Unfortunately, this decision does not address a lot of the issues in my industry (which largely amount to patenting mathematical algorithms).
I support patents, but in moderation. Our system today has become overly patent-heavy in some industries.
.
It's about time. I have always found "business methods" patents to be odious.
That's not what In re Bilski did; business methods are still okay.
See page 21:
.
I'll have to read the case. My riff was just off the headline "State Street Test Is Out." That, in combination with some sort of embodiment requirement may permit certain "business methods" claims to survive. My aversion is to the naked "method" that isn't associated with some novel and non-obvious "platform" (for want of a better definition).
.
Anyway, point taken, inasmuch as "business method," without further qualification is a "categorical exclusion," I have to agree that some business methods claims will survive challenge. But I bet there will be a prompt change in the rate of filings.
Hopefully, this won't get linked on /. and flooded like the hash story (unless the VCers like that sort of net popularity).
The industries that I study (mainly the chemical industry but also the pharmaceutical industry to a degree) rely pretty heavily on patents, but most of the relevant patents are easily linked to a machine or transformation, I would think. Is it correct to say that they will likely be less affected by the new ruling than the software industry?
Another dynamic I am interested in, but know little about, is how IP regulations differentially affect small companies relative to larger, established companies. Does anyone think that this ruling would modulate the dynamic in any way?
Sometimes "gene" patents also claim materials which consist of the cloned DNAs. What distinguishes the materials from any other DNA? Just their sequence, usually.
So a novel gene sequence can be "patented" in this way. Sometimes companies try to circumvent the standard procedures used in cloning to get around these patents.
.
Chemical compounds can be patented, as can methods of producing them, as can methods of using them. The choice of claim language is a fact-intensive inquiry.
.
Business methods patents, at least the ones that rub my fur the wrong way, are in the nature of methods of performing book-keeping, or identifying prospects so as to be most efficient at marketing, or "one click" so as to simplify the customer's experience, etc. etc.
.
Some software patents represent programming principles that are disclosed in textbooks that predate the software. Software (without more) and business methods (without more) is a big rats nest. Pharma and chemicals (and food! All sorts of healthy food patents), not so much.
I have been dismayed by the shallowness and obviousness of some patents over the past 10 years.
This was a company trying to patent commodities trading. It could even be applied to the basic business model of any distributor that buys finished goods from factories and sells them to retailers. It was way overbroad and obvious to anyone who has done business for the past 5,000 years.
The whole business methods patent system is a mess and I am glad that people are starting to rein these folks in.
Another fun Rader dissent, too. He does just what he criticizes the majority for doing: not just saying what he has to say in a single sentence. And yet I'm glad he went on and on, as it's rare to see Lord Vishnu invoked in federal appeals opinions.
No kidding.... Measuring the thickness of a circuit board by measuring the amount of energy needed to heat a cross-section.... Isn't there prior art for something like that somewhere? Or is the use of a laser for the heating process what you are patenting?
Though sometimes I wonder if the patent office prefers patents that patent the patent.
The real interest in this case -- apart from the business method stuff -- was whether the Court was going to delve into the subject matter of the Metabolite v. Lab Corp, which the supremes granted cert. on and then diged.
This would have really effected the biotech/pharma industry. Also, universities. Well, they didn't touch it.
The big issue now with respect to business methods is whether the "tied to a machine" test can be satisfied by just reciting that the method must be performed on a computer. If it can, then this opinion really did nothing to harm business method patents, because it has been pretty standard operating procedure to make at least some of the claims require use of a computer.
Suprisingly enough, the only prior art we could find at the time for this technology was a jet engine manufacturer that was using a similar technique for measuring the titanium thickness on jet engines blades.
At the time that I came up with this idea, using lasers to measure the thickness was considered a dead end. The tin-lead surface had too high a reflectivity and wasn't flat enough for the lasers to get an accurate reading. State of the Art was a drop indicator to directly measure the thickness, there was no automation.
The company I worked for at the time, decided to pursue the patent. I got a nice plaque and about $5000 in bonuses.
Even more interesting, the technology never went past proof of concept. Edge connector design changed and this type of technique was no longer required.
The Constitution doesn't make mention of any other person other than the inventor or authors as those who may patent their inventions.
Based upon my review of the opinion (majority, concurrence, and three dissents [Newman and Rader saying "you got it wrong" and Mayer saying "you did not go far enough]), I must respectfully disagree. The Supreme Court has repeatedly admonished lower courts to avoid the adoption of "per se" categories with regard to Section 101, and yet this is precisely what the CAFC has done. I express no opinion on the merits/demerits of "business method" and "software" inventions and patents therefor, but from my review it seems clear that such inventions have in large measure been swept away from the patent landscape absent clever claim drafting to try and find safe harbor under either the "specific machine" or the "transformation" tests. While such claims can readily be crafted, the more fundamental question is why should this need to be the case? It is disingenuous for the majority to claim that State Street has not been overruled, and yet in the same opinion eliminate the very essence of that case.
What I am left with is the conviction that the majority has punted on the issue, hoping that Bilski appeals and cert is granted. I hope Bilski does just this because it seems clear to me that the CAFC has taken a position at odds with the pronouncements of the Supreme Court and is trying to shift the burden to them.