Brian Prentice

[disclaimer- much to my Mother's disappointment I am not an attorney. These are my personal views and should not be considered legal opinion]

What does the Bilski ruling and your last dinner at a Brazilian churrascaria have in common? While a great deal of anticipation preceded both events, they each resulted in a slow and uncomfortable period of constipation afterwards.

Ba-boom tish!

But seriously folks, most judicial rulings don’t exactly read like a Dan Brown novel but Bilski is a masterpiece of turgidity. Now maybe if I was a lawyer I’d feel differently…but I don’t think so. I was wondering this when I read Rob Tiller’s blog post (Rob is Red Hat’s VP and Assistant General Counsel, IP) and specifically his view that Bilski “…abolished the ‘useful, concrete, and tangible, result…” that came from the State Street ruling.

Now, it could be that Tiller is commenting based on a gist of the ruling rather than a comprehensive reading. I certainly wouldn’t blame him if that was the case. But according to The Law School of The University of Chicago faculty blog “…the precise status of State Street Bank is left open.” So potentially the Bilski ruling hasn’t abolished the State Street tests but, instead, supplemented what was itself a supplement to the traditional tests for novelty and obviousness.

If that’s the case then that’s a lot of tests! Gosh, patent examiners must have been in a frightful dilemma to need additional tests for particular machines and transformation if their stringently applied assessment of novelty, obviousness, usefulness, concreteness, and tangibility were still yielding such a large number of questionable patents.

But when I look at method patents like Method and System for Matching Donations (US Patent 9966747), Method and System for an Electronic Procurement System for State Governments (US Patent 6920430), Object Oriented Technology Framework for Accounts Payable and Accounts Receivable (US Patent 6041312), Website for Financial Information (US Patent 6772146) or my personal favorite Method of Swinging on a Swing (US Patent 6268227) what strikes me is their lack of novelty and utter obviousness. I would also think that anyone even remotely “skilled in the arts” would draw the same conclusion.

So what’s the point of adding a whole bunch of new tests for business method patents (and potentially, by extension, software also) if the USPTO is either unable or unwilling to apply even the most basic standards of novelty and obviousness to this type of subject matter? Nor does it take a great deal of research to find out why this might be the case. The USPTO has been facing significant challenges in managing ever-increasing workloads, problems with staff retention, diminishing patent examination times and the like. The issues leading up to Bilski do not appear to be the result of any ambiguity in the State Street criteria but in a seriously broken patent system.

I find myself again in agreement with Justice Rader’s dissent. In the case of Bilski’s patents the USPTO actually got it right! By hearing an appeal for a patent claim that was clearly intangible and obvious one can be led to believe that the CAFC might have been looking for any opportunity to apply some judicial activism to stem the onslaught of rubbish patents being tipped over the fence and into the backyard of the courts. But at what point does this stop? If there has to be a judicial response to every failure in the bureaucracy then we’ll be left with a Byzantine set of rules that will definitely stifle innovation.

My biggest gripe with Bilski is that it has strengthened the gravitational pull the courts have over the business method and software patent debate rather than diminish it. At this point what we really need is a proper debate on the meaning of innovation in business methods and software and the roles they play in our modern, globalized, information-driven economy. That discussion should be happening in Congress. It is the institution where divergent views and vested interests can be hammered out into some form of compromise. And although far from perfect it is far more inclusive than the submission of amicus briefs.

Past that point we will need to proceed, post haste, to re-craft bureaucratic systems that can be both responsive to and reflective of our 21st century reality.