03 Nov 2009


SFLC and I recently filed a brief in Bilski v. Kappos, along with plenty of other lawyers, and I gave a talk about the case, and the future of patent law, at Cardozo Law School yesterday. The outpouring of amicus briefs in this case, which will be heard by the Court on November 9, must be particularly noticeable to the Justices and their law clerks: a stack of dozens of third-party briefs seeking attention would have been the lunchtime talk of that inner core of the Court back when I worked there, and I’m pretty sure that hasn’t changed. A high stack of amicus briefs—which we called “greens,” for the color of the cover in which the Court requires they be bound—means people outside the Supreme Court think the case is important. Bilski is very important indeed. The Supreme Court and Congress must soon begin shaping patent law for the 21st century. In Bilski, the Supreme Court has an excellent place to start.

Patents used to be given only for products that could be delivered in a box. The Constitution authorizes Congress to give “Inventors” limited-term exclusive rights, but the inventions the founding generation had in mind were physical products of manufacture, like a sewing machine, a cotton gin, or a revolver. Only in 1953, after the industrial transformation of the American economy was long since complete, did Congress amend the Patent Act to permit “process” as well as “product” patents. Within decades of the change, patent law was being used for purposes that Congress had plainly not envisioned in 1953. “Process” patents were being granted on computer programs and methods of doing business using computers to do what used to be done by human beings.

We live now not in an industrial, but in a post-industrial information economy, where complex services combining human and machine intelligence—finance, pharmaceutical discovery and development, business process software—are protected by patents just as complex products combining human intelligence with physical processes mobilizing matter—geochemical discovery and development, metallurgy, structural engineering—characterized the industrial economy.

But patent law cannot award ownership of facts of nature, or mere mental activities, or algorithms: the US Supreme Court has been unambiguous on that point for more than 150 years. For the last 20 years, the US PTO and its supervising appellate court, the Court of Appeals for the Federal Circuit, have been granting patents for inventions consisting of software, or business methods enabled by software. Then, in a series of recent opinions, the Supreme Court began signalling discomfort with the state of patent law, “tightening up” on the requirement that an invention be non-obvious to be patentable, and even intimating that the patentability of software was an open question. So the PTO and the CAFC have moved to rein in the absurdities that characterized yet another bubble of the Second Gilded Era: the patent bubble that cost consumers around the world so many hundreds of billions of dollars. Mr Bilski and Mr Warsaw, like so many other disappointed investors just now, were a little too late at the window where you could get the Patent Office to make non-existent real estate for you. Their computer-assested means of hedging commodities trading risk fails muster of patentability under what the CAFC reluctantly and discordantly says is the test the statute and the Supreme Court meant it to use all along. Bilski and Warsaw’s patent, as a lawyer I don’t agree with about anything else recently said, is a patent everybody knows you shouldn’t get.

So now, shorn of all the technicalities, the Supreme Court gets a chance to say whether it means what it’s always said, or whether it wants to endorse the fast and flashy roundheeled patent system we were running during the boom times. Of course, it can always do nothing at all, or make a new alternative that wasn’t there before; that’s what being the Supreme Court means, as any Legal Realist will tell you. But one thing is certain, that if they wind up saying anything at all, what the Justices say in this case will determine the course of patent law for a long time to come.

permalink | cases/bilski | 2009.11.03-06:00.00

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