Brian Prentice

It’s nearly a month and I’m just getting around to posting my thoughts on the Bilski decisions. Mind you, being on an extended holiday is my excuse. But while I was trading winter in Australia for the blistering heat of the Eastern US, I did have a chance to read through the Supreme Court’s ruling and to reflect on its meaning.

Once the Supreme Court decided to hear the Bilski case, both sides of the patent debate where hoping that their position would finally prevail while, at the same time, being deeply concerned that the other side would emerge victorious. Bilski, as of June 28th, was a high stakes proposition. On June 29th both sides were left scratching their heads wondering what exactly just happened.

Compromise, it’s said, is the art of making sure everyone is unhappy. But while the Bilski ruling meets the unhappy criteria it could scarcely be considered a compromise. Except for deciding that the “particular machine or transformation” test was a key consideration in determining a method’s patentability rather than being the only one, nothing was really reconciled. But neither could Bilski be considered a cop out given the highly considered and deeply intellectual arguments of both Justice Kennedy and Justice Stevens. Both men argue eloquently – one for the historical precedence that would preclude business methods from being patentable and one for for the necessity to maintain an adaptive and flexible approach to patentable subject matter. The crux of the problem was clearly highlighted in the following statement:

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 the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles. Nothing in this opinion should be read to take a position on where that balance ought to be struck.

Ultimately, the Bilski ruling is a stalemate. The Supreme Court simply couldn’t rise above society’s own conflicting perspectives on the nature of patent protection in the digital 21st century economy. They seem prepared to confirm the right approach when they see it, but are unable to establish such an approach on their own.

The fundamental challenge that emerges from the Bilski v. Kapos decision is who should be crafting that approach. It seems that the default position of many is that this requires more tinkering on the part of the Patent & Trademark Office and the lower courts. But I believe that vesting the responsibility to resolve this challenging issue to the bureaucracy and the judiciary will only exacerbate the problem.

Patents are ultimately about inventions and inventors. But you wouldn’t know that today. The patent system seems to have been absconded by the legal profession. Those doing the actual innovation seem to have become merely a backdrop in a lumbering system designed primarily for its own self-preservation. You know things are getting bad when an inventor is unable to understand the patent filing for his or her own work.

As legal complexity becomes increasingly woven into the fabric of intellectual property, there seems to be a mass acquiescence on the part of inventors and business leaders. I see it all the time – it’s the “don’t ask me about IP, that’s the lawyers department” response I hear so often.

But if those very same inventors and business leaders hope for the system to change they will need to stop waiting for the Supreme Court to fix this up. Instead, they’ll need to stand up, engage with one another and find meaningful compromises that can be manifested through the legislative process (note – I’m not referring to the current Patent Reform Act in Congress which I see as 10% reform and 90% reallocating the cost of a broken system to a different set of organizations). What we need is a system that is simplified, made accessible and understandable – one that fosters innovation rather than billable hours. The legal community can’t do this and won’t do this.

There is no easy route here. It is my sincere hope that the pain being felt by so many outside the legal profession will spur them to take ownership to fix our creaking, expensive and uncertain system. As they do they’d do well to remember Edmund Burke’s wise words from over two hundred years ago:

It is not what a lawyer tells me I may do; but what humanity, reason, and justice tell me I ought to do.

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