Blog post

Bilski = Billable Hours

By Brian Prentice | November 03, 2008 | 1 Comment

The Future of Ownership - IP & IT Industry

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

Now that the Bilski ruling is in, the discomfort being felt by those who’ve invested the effort and money to patent their business methods is providing no small amount of Schadenfreude to those long opposed to these types of patents. Many also see a new direction in the courts which will test the viability of business method and software patents – including my esteemed colleague Nick Gall.

But at the moment Bilski hasn’t changed the status of either business methods or software as patentable material. Instead it’s made business methods, in particular, a lot harder to obtain as they now have to be tied to a particular machine or apparatus and transform a particular article into a different state or thing. So that should mean a reduction in the number of business method patents, and that’s good, right? Not so fast. There’s a price to be paid. Let me defer to the opinion offered by one of the dissenting judges, Justice Rader:

In sum, this court today invents several circuitous and unnecessary tests. It should have merely noted that Bilski attempts to patent an abstract idea. Nothing more was needed. Instead this opinion propagates unanswerable questions: What form or amount of “transformation” suffices? When is a “representative” of a physical object sufficiently linked to that object to satisfy the transformation test? (e.g., Does only vital sign data taken directly from a patient qualify, or can population data derived in part from statistics and extrapolation be used?) What link to a machine is sufficient to invoke the “or machine” prong? Are the “specific” machines of Benson required, or can a general purpose computer qualify? What constitutes “extra-solution activity?” If a process may meet eligibility muster as a “machine,” why does the Act “require” a machine link for a “process” to show eligibility? Does the rule against redundancy itself suggest an inadequacy in this complex spider web of tests supposedly “required” by the language of section 101?

I think Justice Rader has hit the nail on the head. The majority’s dense and convoluted reasoning is too smart by half. At a time when numerous industries – including IT – thought they had a modicum of clarity on business method and software patents we’ve been collectively served up years of ongoing litigation to try and sort all these questions out. Even the joy being felt by so many over the loss of all those business method patents could be short-lived. As Justice Mayer points out in his dissenting opinion:

The majority’s proposed “machine-or-transformation test” for patentability will do little to stem the growth of patents on non-technological methods and ideas. Quite simply, in the context of business method patent applications, the majority’s proposed standard can be too easily circumvented…. Through clever draftsmanship, nearly every process claim can be rewritten to include a physical transformation.

In the end the only people who’ll be really happy with the Bilski decision will be IP attorneys around the country. They should be crafting some extra special Christmas cards to the CAFC for all the six minute billable increments they’ll be adding into their time sheets next year. No recession for these folks!

But Bilski is also a lost opportunity. Again, I defer to Justice Rader:

With all of its legal sophistry, the court’s new test for eligibility today does not answer the most fundamental question of all: why would the expansive language of section 101 preclude protection of innovation simply because it is not transformational or properly linked to a machine (whatever that means)? Stated even more simply, why should some categories of invention deserve no protection?

This is the essence of the patent debate that I fear will be lost in a stream of Bilski-inspired legal minutiae. I applaud the efforts of the dissenting judges – even though their views are clearly divergent – for at least staying focused on that issue. And I’d suggest we all keep in mind the sage insight of Justice Newman:

Uncertainty is the enemy of innovation

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1 Comment

  • Your points are excellent and can stand as ready precedent for intelligent discourse on this topic. While brilliant minds can deliberate to craft philosophy it can be at the expense of those, clients and patent attorneys alike, who are obligated by standards which are indiscernable.

    Clarity is long overdue. With this decision, we can be sure of one thing – the time frame to receive it just became exponentially longer.

    I appreciate your insights.
    Cheryl Milone
    Article One Partners, LLC