|Bilski - What It Means, Part 3 - The Mayer Dissent & Some Intangibility Questions - Updated 2Xs
Sunday, November 09 2008 @ 09:26 PM EST
Continuing our series on the In Re Bilski ruling [PDF], here is Judge Mayer's dissenting opinion as text, the one that points out how utterly damaging all business methods patents are. Also, a reader sent me this link to what I agree is the best overview of the ruling that we've seen yet, by the law firm of Ladas & Parry. It sticks to what the ruling says, as opposed to predictions of what it might mean. Here's how they paraphrase Judge Mayer's dissent:
The decision is too complicated. State Street should have been over-ruled and patents confined to technological inventions. Clear and simple. And if I might be allowed, Amen. But that might be a little too simplified. Here's a more substantive taste of Mayer's dissenting opinion, in his own words:
The en banc order in this case asked: "Whether it is appropriate to reconsider State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999), in this case and, if so, whether those cases should be overruled in any respect?" I would answer that question with an emphatic "yes." The patent system is intended to protect and promote advances in science and technology, not ideas about how to structure commercial transactions. Claim 1 of the application of Bernard L. Bilski and Rand A. Warsaw ("Bilski") is not eligible for patent protection because it is directed to a method of conducting business. Affording patent protection to business methods lacks constitutional and statutory support, serves to hinder rather than promote innovation and usurps that which rightfully belongs in the public domain. State Street and AT&T should be overruled.... Also clear and simple, but as you see, it isn't just State Street that Judge Mayer feels should be overruled but also AT&T, which I highly recommend you read, but not if you have high blood pressure and are a programmer. It was about methods patents, but also about whether or not one could patent a mathematical algorithm. Here's a quote for you:
There is nothing in the early patent statutes to indicate that Congress intended business methods to constitute patentable subject matter....In passing the 1952 Act, Congress re-enacted statutory language that had long existed, thus signaling its intent to carry forward the body of case law that had developed under prior versions of the statute. Because there is nothing in the language of the 1952 Act, or its legislative history, to indicate that Congress intended to modify the rule against patenting business methods, we must presume that no change in the rule was intended. See, e.g., Astoria Fed. Sav. & Loan Ass'n v. Solimino ... ("[W]here a common-law principle is well established . . . the courts may take it as given that Congress has legislated with an expectation that the principle will apply except when a statutory purpose to the contrary is evident."
Because 101 includes processes as a category of patentable subject matter, the judicially-defined proscription against patenting of a "mathematical algorithm," to the extent such a proscription still exists, is narrowly limited to mathematical algorithms in the abstract. I know. It takes us into OMG territory. It's what Bilski was trying to address. The AT&T decision built on and depended on State Street, and Judge Mayer is saying that State Street came out of the blue, contradicting prior common law and the patent statutes, and it really needs to be clearly killed off and buried, along with any of its children, because it was a mistake, one that launched what he calls "a legal tsunami" of regrettable patents on what ought to be the unpatentable.
You'll find all five of the questions the court asked everyone to answer here, by the way, along with links to other cases cited prominently in the Bilski decision.
Also, a longtime reader sent me the most interesting email which I'd like to share with you in response to an article on PatentlyO, by Professor Kevin Emerson Collins of Indiana University Law School, titled In re Bilski: Tangibility Gone “Meta”. Professor Collins is scratching his head about the line drawn for patent eligibility in Bilski , the "machine-or-transformation" standard. He's certainly not alone.
Here's a key paragraph from Professor Collins' article, which explains his title:
The tangibility of the formal data that is actually transformed by a method of processing information is not relevant to patent-eligibility, but the tangibility of the things that the data is about—the tangibility of the informational content of the data or the things to which the data refers—now appears to be dispositive.
He goes on to discuss the two-prong test for transformation set out in Bilski, first, that the transformation "must be central to the purpose of the claimed process" and second, that it must transform a certain type of "article."
Then, as he reads Bilski, he sees a subcategory of two different categories of "electronically-manipulated data" only one of which is patentable, namely data that represents a "physical object or substance."
Nonpatentable articles is a category with two parts also, he writes, one, data that doesn't represent anything (or that can represent anything). The second is "data that represents something specific or something in particular, but that something represented is itself intangible". The Bilski patent, for example, the court wrote, "transform[s]" or "manipulat[es]" data representing "public or private legal obligations or relationships, business risks, or other such abstractions," not data "representative of physical objects or substances." And that's what he sees as both new and head-scratchingly odd:
However, what is new in Bilski is the importance now placed on the physicality of the thing to which the data refers. Thus, the tangibility test has gone "meta": it is no longer the tangibility of jostling electrons that is of concern (as it was in the early days of patents on computer-executed information processing methods), but the tangibility of the stuff represented by those electrons-as-symbols. In the language of semiotics, the tangibility analysis has shifted from a concern about the tangibility of the signifier—the physical configuration of matter that forms a symbol—to a concern about the tangibility of the signified—the informational content of or the thing represented by the symbol.
So, that's how patent lawyers and professors are struggling with Bilski. Geeks are too, but in different ways. Perhaps it will help the former categories to listen to the latter, because geeks get the math of it all and the logic. Logic is what computer programmers live by, after all.
Here are the two questions Professor Collins asks, and by all means feel free to answer him in your comments:
First, the move raises a normative question: Why should we treat information about tangible things in a manner that is categorically different from the manner in which we treat information about intangible things? Having taken its cue from the Supreme Court, the Federal Circuit clearly wants to prevent patent-eligible method claims from pre-empting mathematical "fundamental principles." Slip op. at 26. However, the most appropriate means to achieve this end would seem to be a focus on the specificity, not the intangibility, of what is meant. Why should the manipulation of data that represents my height (a presumptively physical property of my body) be patentable, yet the manipulation of data that represents my expected longevity (a property that is difficult to classify as a physical one) be unpatentable?
In my view, the short answer is that Bilski isn't the last or best word, and that in time there will be further refinements. That may be too small a word, actually, but I read Bilski as leaving it to the Supreme Court to do anything new, useful and practical about software patents, if I might coin the phrase, while the US Appeals Court for the Federal Circuit stands on a very old dime in the meanwhile, while attempting to basically make it harder to patent mathematical "fundamental principles." The court doesn't want anyone to patent 1 + 1 = 2, in other words, because the whole world needs to be able to do that. But if you use 1 + 1 = 2 in a process that is patentable because it's tied to a particular machine and/or is transformative, that's fine with them. That's if I understand what the court wrote. Considering that patent lawyers and professors are still struggling with it, I'm guessing I don't yet fully.
Second, the move raises concerns about administrability. Is data about my expected longevity about something physical, namely my body? If it is, then why isn't the data at issue in Bilski also about something tangible? The data is after all about a property of lumps of coal, namely their expected future rate of consumption or the legal rights that individuals have with respect to them. Or, to formulate the administrability problem in a recursive manner, what about data that is about the structural qualities of electronic signals? To determine whether a method that manipulates such data is patent-eligible, it would seem again to be necessary to confront the tangibility of an electronic signal—the very question that patent doctrine has been trying to render irrelevant for several decades—but this time with the signal as a signified rather than as a signifier.
Update: Here's another very detailed and clear rundown on the Bilski ruling, in an article titled "In re Bilski: The Fed Circuit Tells Inventors to Stuff It", by Randy Picker on the University of Chicago Law School's Faculty Blog, and let's take a look at the paragraph describing the Mayer dissent:
Judge Mayer’s dissenting opinion joins the patent naysayers: “The patent system has run amok” (Mayer op, p.24). He dates that from State Street Bank: “the patent system is intended to protect and promote advances in science and technology, not ideas about how to structure commercial transactions.” (p.1) State Street Bank has allowed “exclusive ownership of subject matter that rightfully belongs in the public domain.” (p.20) Judge Mayer believes that the new test will not end that process, as a clever reworking of the Bilski claims—tying them more directly to actual machines—might result in the patent being sustained. He leaves no doubt about what he would have done: “the time is ripe to repudiate State Street and to recalibrate the standards for patent eligibility, thereby ensuring that the patent system can fulfill its constitutional mandate to protect and promote truly useful innovations in science and technology.” (p.25) [End update.]
But the problem, I think, is much deeper. Already, you see patents lawyers coming up with strategies to get around Bilski. And until some court rules more clearly, it will continue. I saw one lawyer opine that there will be more things patentable now as compared to under State Street, not less. The line has to be so clear, they just stop trying. Otherwise, I await the argument that because my brain is physical, all my thoughts are patentable, because they happen there, in my physical brain matter, and if we throw in a particular machine, my laptop, all of my ideas on Groklaw on how to fix things, the process on how to do so, are patentable. Heaven only knows Groklaw is transformative.
It's truly at pretty much that silly a level already, and the Bilski fix isn't clear even to the patent lawyers who eat, sleep and drink this stuff, so we await the final solution, methinks.
Here's the email I got from a longtime Groklaw lurker responding to Professor Collins, which he might title "T'ain't what you do, it's the way that you do it":
Every time we see someone try to categorize types of "intangibility" there
appears to be a logical fallacy involved. In this case it has to do with
what an invention is that has an intangible element - model representation
of something tangible in software, or in the case of Bilski in someone's mind.
1. Proponents of anything-goes patents tend to lose the distinction between
what is being patented, and what the patent does. The patent isn't on the
result, rather on how you do it. (~ "It ain't what you do, it's the way
that you do it!
2. The second type of intangibility mentioned by Professor Collins suffers
from the lack of provable patent claims. You can't tell if something
infringes or not. You can't tell one unobservable process from another if
they produce equivalent results.
3. Allowing patents with claims that can't be verified is equivalent to
granting monopolies on ideas. The patent holder (thinks he/she) has the
right to any invention that produces the result.
We get a hint of the tangible/intangible dichotomy in "intellectual
property" from 17 USC § 101. Definitions (Copyrights)
A work is “created” when it is fixed in a copy or phonorecord for the
first time; where a work is prepared over a period of time, the portion of
it that has been fixed at any particular time constitutes the work as of
that time, and where the work has been prepared in different versions,
each version constitutes a separate work.
Things not fixed (real/intangible) aren't protected by copyright, nor
patents. The logical fallacy is in mistaking what the patent application
attempts to cover versus the results of the process operated by the
"invention" (the transformed article). The old 'name' versus 'thing'
conundrum. Sure, Bilski's patent application covering a process that can
be done by cognitive action of a person can be used to affect real world
results by manipulating abstract representations and applying them to the
actions. The basic problem is that there is no visibility into the
execution of the process someone does through cognitive action. There is no
way to prove that a patent has been infringed.
As an example of the distinction between following a method and simply
successfully performing an equivalent cognitive task, imagine someone
solving a Rubik's cube. You can learn by trial and error and
constructing an intuitive understanding how cause and effect works to solve
the puzzle by transitioning from the current state of the device to a new
state, evaluating the effects as positive or negative, a learning process.
Contrast this to buying a book on the puzzle and learning by rote response
to solve it (a method). The distinction is learned intuition and rote
following of a process (the method).
If there is no enumeration of the method represented in the real world there
is no proof the "invention" was used, and not the result of a cognition.
Intellectual property that isn't 'fixed' or fixated isn't protected as real.
Trying to prove
infringement without proof is simply trying to depend on the observable
results. Because if you can't distinguish between the methods used, you can't
verify whether the "invention" was used or cognition was used. If you
can't distinguish, successful enforcement ends up with the patent holder
potentially owning ideas.
You can say the same thing about a program you run on a general purpose
computer that results in no traceability between program execution and real
world transformation (as in I saw the results on the screen and did 'X' as a
result). For all we know the box contains the proverbial chess-playing
dwarf. The "invention" isn't executed in the realm of the real, while it
would be if you have data input and output with a demonstrable
transformation. Even then the proof that the "invention" is involved can
require verification testing.
Algorithms such as used in cryptography can have verification suites that
demonstrate complete adherence to a defining standard. For the Digital
Encryption Standard (DES) there are test vectors that test individual binary
relations between data. You can execute a subset of the tests and not test
all of these relationships properly. If you claim the subset are sufficient
to prove the algorithm (our method) is being executed according to the
standard (our patent) that elaborates these binary relationships as
necessary (claims) to adherence (or infringement), and you aren't proving
the relationships are adhered to (aren't proving the claims), then the
implementation isn't compliant (or article isn't infringing). This is why
full disclosure is required of inventions and claims have their own language
domain - the need for proof.
Professor Collins' second form of intangible process suffers from the
inability to prove that an invention was used, not being verifiable against
patent claims, no observable "transformation". Also it isn't the
transformation that is being patented, rather the method of doing so.
There's a presumption that there may be more than one method awaiting
discovery by disclosure-enabled practitioners of the arts and sciences....
The song by jazz musicians Melvin "Sy" Oliver and James "Trymmy" Young.
Interesting, no? No doubt you'll have other thoughts to add to the mix. Just as patent lawyers don't always get the tech perfectly in their expressions, geeks won't always get the legal details exactly right. But it's important that there be a cross-pollination. That's exactly what patents on methods, abstract ideas, and software interfere with, of course, cross-pollination.
I got some other emails about Microsoft's amicus brief in Bilski and the "particular machine" requirement, and I'll write about that in the next and final article in this series, on what Bilski may mean for Microsoft's patent threats.
[ Update 2: This is interesting. Intellectual Property Colloquium has a audio presentation about Bilski, which includes interviews with Professor John Duffy, who was one of the amici lawyers who filed an amicus brief [PDF] and with Professor Rob Merges, who also authored an amicus brief [PDF]. Duffy also argued at the en banc hearing. If you missed it, you can listen to it by going here and search by keyword Bilski, but this presentation includes tidbits. Note that the May 8, 2008 hearing is in two mp3s. You can find a list of many of the amicus briefs here. End update.]
And here is Judge Mayer's dissent, as text:
United States Court of Appeals for the Federal
(Serial No. 08/883,892)
IN RE BERNARD L. BILSKI
and RAND A. WARSAW
Appeal from the United States Patent and Trademark Office, Board
of Patent Appeals and Interferences.
MAYER, Circuit Judge, dissenting.
The en banc order in this case asked: "Whether it is appropriate to
reconsider State Street Bank & Trust Co. v. Signature
Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and
AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352
(Fed. Cir. 1999), in this case and, if so, whether those cases
should be overruled in any respect?" I would answer that question
with an emphatic "yes." The patent system is intended to protect
and promote advances in science and technology, not ideas about how
to structure commercial transactions. Claim 1 of the application of
Bernard L. Bilski and Rand A. Warsaw ("Bilski") is not eligible for
patent protection because it is directed to a method of conducting
business. Affording patent protection to business methods lacks
constitutional and statutory support, serves to hinder rather than
promote innovation and usurps that which rightfully belongs in the
public domain. State Street and AT&T should be
In discussing the scope of copyright protection, the Supreme
Court has noted that "'a page of history is worth a volume of
logic.'" Eldred v. Ashcroft, 537 U.S. 186, 200 (2003)
(quoting New York Trust Co. v. Eisner, 256 U.S. 345, 349
(1921)). The same holds true with respect to patent protection.
From a historical perspective, it is highly unlikely that the
framers of the Constitution's intellectual property clause intended
to grant patent protection to methods of conducting business. To
the contrary, "those who formulated the Constitution were familiar
with the long struggle over monopolies so prominent in English
history, where exclusive rights to engage even in ordinary business
activities were granted so frequently by the Crown for the
financial benefits accruing to the Crown only." In re Yuan,
188 F.2d 377, 380 (CCPA 1951). The Statute of Monopolies,1
enacted in 1624, curtailed the Crown's ability to grant "monopolies
to court favorites in goods or businesses which had long before
been enjoyed by the public." Graham v. John Deere Co., 383
U.S. 1, 5 (1966). When drafting the Constitution, the framers were
well aware of the abuses that led to the English Statute of
Monopolies and therefore "consciously acted to bar Congress from
granting letters patent in particular types of business." In re
Comiskey, 499 F.3d 1365, 1375 (Fed. Cir. 2007); see also
Malla Pollack, The Multiple Unconstitutionality of Business
Method Patents: Common Sense, Congressional Consideration, and
Constitutional History, 28 Rutgers Computer & Tech. L.J.
61, 90 (2002) ("[T]he ratifying generation did not agree
to invention patents on advances in trade itself, because trade
monopolies were odious.").
There is nothing in the early patent statutes to indicate that
Congress intended business methods to constitute patentable subject
matter. See Patent Act of 1790 § 4, 1 Stat. 109, 111
(1790); Patent Act of 1793 § 1, 1 Stat. 318, 319 (1793);
Pollack, supra at 106 ("[I]f any nation was ripe for
invention patents on business methods, it was the newly freed
colonies of British North America. . . . [H]owever, no business
method patents seem to have been granted."). As early as 1869, the
Commissioner of Patents said that "[i]t is contrary . . . to the
spirit of the law, as construed by the office for many years, to
grant patents for methods of book-keeping," Ex parte
Abraham, 1869 Dec. Comm'r Pat. 59, 59 (1869), and by 1893 the
courts had concluded that "a method of transacting common business
. . . does not seem to be patentable as an art," United States
Credit Sys. Co. v. Am. Credit Indem. Co., 53 F. 818, 819
(C.C.S.D.N.Y. 1893), aff'd on other grounds, 59 F. 139 (2d
Cir. 1893). By 1952, when Congress enacted the current Patent Act,
it was widely acknowledged that methods of doing business were
ineligible for patent protection. See, e.g., Loew's
Drive-In Theatres, Inc. v. Park-In Theatres, Inc., 174 F.2d
547, 552 (1st Cir. 1949) ("[A] system for the transaction of
business . . . however novel, useful, or commercially successful is
not patentable apart from the means for making the system
practically useful, or carrying it out."); In re Patton, 127
F.2d 324 (CCPA 1942) (noting that "a system of transacting
business, apart from the means for carrying out such system" is not
patentable); Hotel Sec. Checking Co. v. Lorraine Co., 160 F.
467, 469 (2d Cir. 1908) ("A system of transacting business
disconnected from the means for carrying out the system is not,
within the most liberal
interpretation of the term, an art."); In re Moeser, 27
App. D.C. 307, 310 (1906) (holding that a system for burial
insurance contracts was not patentable because "contracts or
proposals for contracts, devised or adopted as a method of
transacting a particular class of . . . business, [are] not
patentable as an art"); see also 145 Cong. Rec. H6,947 (Aug.
3, 1999) (statement of Rep. Manzullo) ("Before the State Street
Bank and Trust case . . . it was universally thought that methods
of doing or conducting business were not patentable items.").
In passing the 1952 Act, Congress re-enacted statutory language
that had long existed,2 thus signaling its intent to carry
forward the body of case law that had developed under prior
versions of the statute. Because there is nothing in the language
of the 1952 Act, or its legislative history, to indicate that
Congress intended to modify the rule against patenting business
methods, we must presume that no change in the rule was intended.
See, e.g., Astoria Fed. Sav. & Loan Ass'n v.
Solimino, 501 U.S. 104, 108 (1991) ("[W]here a common-law
principle is well established . . . the courts may take it as given
that Congress has legislated with an expectation that the principle
will apply except when a statutory purpose to the contrary is
evident." (citations and internal quotation marks omitted));
Isbrandtsen Co. v. Johnson, 343 U.S. 779, 783 (1952)
("Statutes which invade the common law . . . are to be read with a
presumption favoring the retention of long-established and familiar
principles, except when a statutory purpose to the contrary is
evident."); see also In re Schrader, 22 F.3d 290, 295
(Fed. Cir. 1994) ("When Congress approved the addition of the term
'process' to the
categories of patentable subject matter in 1952, it incorporated
the definition of 'process' that had evolved in the courts."
(footnote omitted)). If Congress had wished to change the
established practice of disallowing patents on business methods, it
was quite capable of doing so explicitly. See Parker v.
Flook, 437 U.S. 584, 596 (1978) (stressing that courts "must
proceed cautiously when . . . asked to extend patent rights into
areas wholly unforeseen by Congress").
State Street's decision to jettison the prohibition
against patenting methods of doing business contravenes
congressional intent. Because (1) "the framers consciously acted to
bar Congress from granting letters patent in particular types of
business," Comiskey, 499 F.3d at 1375, and (2) Congress
evidenced no intent to modify the long-established rule against
business method patents when it enacted the 1952 Patent Act, it is
hard to fathom how the issuance of patents on business methods can
Business method patents have been justified, in significant
measure, by a misapprehension of the legislative history of the
1952 Patent Act. In particular, proponents of such patents have
asserted that the Act's legislative history states that Congress
intended statutory subject matter to "include anything under the
sun that is made by man." AT&T, 172 F.3d at 1355 (Fed.
Cir. 1999) (citations and internal quotation marks omitted); see
also Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980).
Read in context, however, the legislative history says no such
thing. The full statement from the committee report reads: "A
person may have 'invented' a machine or a manufacture, which may
include anything under the sun that is made by man, but it is
not necessarily patentable under section 101 unless the conditions
of the title are
fulfilled." S. Rep. No. 1979, 82d Cong., 2d Sess. 5
(1952) (emphasis added); H.R. Rep. No. 1923, 82d Cong., 2d Sess. 6
(1952) (emphasis added).
This statement does not support the contention that Congress
intended "anything under the sun" to be patentable. To the
contrary, the language supports the opposite view: a person may
have "invented" anything under the sun, but it is "not necessarily
patentable" unless the statutory requirements for patentability
have been satisfied. Thus, the legislative history oft-cited to
support business method patents undercuts, rather than supports,
the notion that Congress intended to extend the scope of section
101 to encompass such methods.
Moreover, the cited legislative history is not discussing
process claims at all. The quoted language is discussing "machines"
and "manufactures;" it is therefore surprising that it has been
thought a fit basis for allowing patents on business processes.
The Constitution does not grant Congress unfettered authority to
issue patents. See U.S. Const. art. I, § 8.3
Instead, the patent power is a "qualified authority . . . [which]
is limited to the promotion of advances in the 'useful arts.'"
Graham, 383 U.S. at 5; see also KSR Int'l Co. v.
Teleflex Inc., 127 S. Ct. 1727, 1746 (2007) (reaffirming that
patents are designed to promote "the progress of useful arts").
What the framers described as "useful arts," we in modern times
call "technology." Paulik v. Rizkalla, 760 F.2d 1270, 1276
(Fed. Cir. 1985) (en banc). Therefore, by mandating that
advance the useful arts, "[t]he Constitution explicitly limited
patentability to . . . 'the process today called technological
innovation.'" Comiskey, 499 F.3d at 1375 (quoting
Paulik, 760 F.2d at 1276); see also In re
Foster, 438 F.2d 1011 (CCPA 1971) ("All that is necessary . . .
to make a sequence of operational steps a statutory 'process'
within 35 U.S.C. § 101 is that it be in the technological
arts."); Karl B. Lutz, Patents and Science: A Clarification of
the Patent Clause of the U.S. Constitution, 18 Geo. Wash. L.
Rev. 50, 54 (1949) ("The term 'useful arts' as used in the
Constitution . . . is best represented in modern language by the
word 'technology.'"); James S. Sfekas, Controlling Business
Method Patents: How the Japanese Standard for Patenting Software
Could Bring Reasonable Limitations to Business Method Patents in
the United States, 16 Pac. Rim. L. & Pol'y J. 197, 214
(2007) (At the time the Patent Clause was adopted, "the term
'useful arts' was commonly used in contrast to the ideas of the
'liberal arts' and the 'fine arts,' which were well-known ideas in
the eighteenth century.").
Before State Street led us down the wrong path, this
court had rightly concluded that patents were designed to protect
technological innovations, not ideas about the best way to run a
business.4 We had thus rejected as unpatentable
a method for
coordinating firefighting efforts, Patton, 127 F.2d at 326-27, a
method for deciding how salesmen should best handle customers, In
re Maucorps, 609 F.2d 481 (CCPA 1979), and a computerized method
for aiding a neurologist in diagnosing patients, In re Meyer, 688
F.2d 789 (CCPA 1982).5 We stated that patentable processes
must "be in the technological arts so as to be in consonance with
the Constitutional purpose to promote
the progress of 'useful arts.'" In re Musgrave, 431 F.2d
882, 893 (CCPA 1970) (emphasis added).
Business method patents do not promote the "useful arts" because
they are not directed to any technological or scientific
innovation. Although business method applications may use
technology — such as computers — to accomplish desired
results, the innovative aspect of the claimed method is an
entrepreneurial rather than a technological one. Thus, although
Bilski's claimed hedging method could theoretically be implemented
on a computer, that alone does not render it patentable. See
Diehr, 450 U.S. at 192 n.14 (Patentability cannot be
established by the "token" use of technology.); Gottschalk v.
Benson, 409 U.S. 63, 64-66 (1972) (finding unpatentable a
method of programming a general purpose digital computer to convert
signals from binary-coded decimal to pure binary form). Where a
claimed business method simply uses a known machine to do what it
was designed to do, such as using a computer to gather data or
perform calculations, use of that machine will not bring otherwise
unpatentable subject matter within the ambit of section 101.
See Benson, 409 U.S. at 67 (finding a process
unpatentable where "[t]he mathematical procedures [could] be
carried out in existing computers long in use, no new machinery
Although the Supreme Court has not directly addressed the
patentability of business methods, several of its decisions
implicitly tether patentability to technological innovation.
See Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 63
(1998) ("[T]he patent system represents a carefully crafted bargain
that encourages both the creation and the public disclosure of new
and useful advances in technology, in return for an
exclusive monopoly for a limited period of time." (emphasis
added)); Markman v. Westview
Instruments, Inc., 517 U.S. 370, 390 (1996) ("Congress
created the Court of Appeals for the Federal Circuit as an
exclusive appellate court for patent cases . . . observing that
increased uniformity would strengthen the United States patent
system in such a way as to foster technological growth and
industrial innovation." (citations and internal quotation marks
omitted) (emphasis added)); Benson, 409 U.S. at 71 (refusing
to "freeze [the patentability of] process patents to old
technologies, leaving no room for the revelations of the
new, onrushing technology" (emphases added)). Indeed, the
Supreme Court has repeatedly emphasized that what renders subject
matter patentable is "the application of the law of nature to a new
and useful end." Funk Bros. Seed Co. v. Kalo Inoculant Co.,
333 U.S. 127, 130 (1948); see Diehr, 450 U.S. at 188
n.11; Benson, 409 U.S. at 67. 6 Applying laws of
nature to new and useful ends is nothing other than
"technology."7 See, e.g., Microsoft
Computer Dictionary 513 (5th ed. 2002) (The definition of
"technology" is the "application of science and engineering to
development of machines and procedures in order to enhance or
improve human conditions.''); American Heritage Dictionary of
the English Language 1777 (4th ed. 2000) ("Technology" is the
"application of science, especially to industrial or commercial
objectives."); see also Sfekas, supra at 214-15 ("The
[Supreme] Court's holdings in Benson and Diehr are
really stating a requirement that inventions must be
technological."); Schwartz, supra at 357 (The "clear and
consistent body of Supreme Court case law establishes that the term
'invention' encompasses anything made by man that utilizes or
harnesses one or more 'laws of nature' for human benefit."). As the
Supreme Court has made clear, "the act of invention . . . consists
neither in finding out the laws of nature, nor in fruitful research
as to the operation of natural laws, but in discovering how those
laws may be utilized or applied for some beneficial purpose, by a
process, a device or a machine." United States v. Dubilier
Condenser Corp., 289 U.S. 178, 188 (1933).
Methods of doing business do not apply "the law of nature to a
new and useful end." Because the innovative aspect of such methods
is an entrepreneurial rather than a technological one, they should
be deemed ineligible for patent protection. See, e.g., John
R. Thomas, The Patenting of the Liberal Professions, 40 B.C.
L. Rev. 1139 (1999) (arguing that affording patentability to
business methods opens the door to obtaining patent protection for
all aspects of human thought and behavior, and that patents should
remain grounded in science and technology) (hereinafter "Thomas
(1999)"). "[T]he primary purpose of our patent laws is not the
creation of private fortunes for the owners of patents but is 'to
promote the progress of science and useful arts.'" Motion
Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502,
511 (1917). Although business
method patents may do much to enrich their owners, they do
little to promote scientific research and technological
State Street has launched a legal tsunami, inundating the
patent office with applications seeking protection for common
business practices.8 Applications for Class 705 (business
method) patents increased from fewer than 1,000 applications in
1997 to more than 11,000 applications in 2007. See United
States Patent and Trademark Office, Class 705 Application Filings
and Patents Issued Data, available at
(information available as of Jan. 2008); see Douglas L.
Price, Assessing the Patentability of Financial Services and
Products, 3 J. High Tech. L. 141, 153 (2004) ("The State
Street case has opened the floodgates on business method
Patents granted in the wake of State Street have ranged
from the somewhat ridiculous to the truly absurd. See, e.g.,
U.S. Patent No. 5,851,117 (method of training janitors to dust and
vacuum using video displays); U.S. Patent No. 5,862,223 (method for
selling expert advice); U.S. Patent No. 6,014,643 (method for
trading securities); U.S. Patent No. 6,119,099 (method of enticing
customers to order additional food at a
fast food restaurant); U.S. Patent No. 6,329,919 (system for
toilet reservations); U.S. Patent No. 7,255,277 (method of using
color-coded bracelets to designate dating status in order to limit
"the embarrassment of rejection"). There has even been a patent
issued on a method for obtaining a patent. See U.S. Patent
No. 6,049,811. Not surprisingly, State Street and its
progeny have generated a thundering chorus of criticism. See
Leo J. Raskind, The State Street Bank Decision: The Bad Business
of Unlimited Patent Protection for Methods of Doing Business,
10 Fordham Intell. Prop. Media & Ent. L.J. 61, 61 (1999) ("The
Federal Circuit's recent endorsement of patent protection for
methods of doing business marks so sweeping a departure from
precedent as to invite a search for its justification."); Pollack,
supra at 119-20 (arguing that State Street was based
upon a misinterpretation of both the legislative history and the
language of section 101 and that "business method patents are
problematical both socially and constitutionally"); Price,
supra at 155 ("The fall out from State Street has
created a gold-rush mentality toward patents and litigation in
which companies . . . . gobble up patents on anything and
everything . . . . It is a mad rush to get as many dumb patents as
possible." (citations and internal quotation marks omitted));
Thomas (1999), supra at 1160 ("After State Street, it
is hardly an exaggeration to say that if you can name it, you can
claim it."); Sfekas, supra at 226 ("[T]he U.S. courts have
set too broad a standard for patenting business methods. . . .
These business method patents tend to be of lower quality and are
unnecessary to achieve the goal of encouraging innovation in
business."); William Krause, Sweeping the E-Commerce Patent
Minefield: The Need for a Workable Business Method Exception,
24 Seattle U. L. Rev. 79, 101 (2000) (State Street "opened
up a world of unlimited possession to anyone quick enough to take
business method and put it to use via computer software before
anyone else."); Moy, supra at 1051 ("To call [the situation
following State Street] distressing is an understatement. The
consensus . . . appears to be that patents should not be issuing
for new business methods.").
There are a host of difficulties associated with allowing
patents to issue on methods of conducting business. Not only do
such patents tend to impede rather than promote innovation, they
are frequently of poor quality. Most fundamentally, they raise
significant First Amendment concerns by imposing broad restrictions
on speech and the free flow of ideas.
"[T]he underlying policy of the patent system [is] that 'the
things which are worth to the public the embarrassment of an
exclusive patent,' . . . must outweigh the restrictive effect of
the limited patent monopoly." Graham, 383 U.S. at 10-11
(quoting letter from Thomas Jefferson to Isaac McPherson (Aug.
1813)). Thus, Congress may not expand the scope of "the patent
monopoly without regard to the . . . advancement or social benefit
gained thereby." Id. at 6.
Patents should be granted to those inventions "which would not
be disclosed or devised but for the inducement of a patent."
Id. at 11. Methods of doing business have existed since the
earliest days of the Patent Act and have flourished even in the
absence of patent protection. See Brian P. Biddinger,
Limiting the Business Method Patent: A Comparison and Proposed
Alignment of European, Japanese and United States Patent Law,
69 Fordham L. Rev. 2523, 2544-50 (2001). Commentators have argued
that "the broad grant of patent protection for methods of doing
something of a square peg in a sinkhole of uncertain dimensions"
since "[n]owhere in the substantial literature on innovation is
there a statement that the United States economy suffers from a
lack of innovation in methods of doing business." Raskind,
supra at 92-93. Instead, "the long history of U.S. business
is one of innovation, emulation, and innovation again. It also is a
history of remarkable creativity and success, all without business
method patents until the past few years." Smith, supra at
178; see also Sfekas, supra at 213 ("While innovation in
business methods is a good thing, it is likely that there would be
the same level of innovation even without patents on [such
Business innovations, by their very nature, provide a
competitive advantage and thus generate their own incentives.
See Xiang, supra at 813 ("A business entity improves
the way it does business in order to be more effective and
efficient, to stay ahead of [the] competition, and to make more
profit."). The rapid "growth of fast food restaurants, self-service
gasoline stations, quick oil change facilities . . . automatic
teller devices . . . and alternatives for long-distance telephone
services" casts real doubt about the need for the additional
incentive of patent protection in the commercial realm. Raskind,
supra at 93.
Although patents are not a prerequisite to business innovation,
they are of undeniable importance in promoting technological
advances. For example, the pharmaceutical industry relies on patent
protection in order to recoup the large sums it invests to develop
life-saving and life-enhancing drugs:
[T]he "fully loaded" cost of developing a single new
pharmaceutical molecule, taking it though laboratory and clinical
trials, and securing FDA approval for its marketing is today about
$800 million (including the cost of project failures). Furthermore,
fewer than one in five drug candidates that
make it out of the laboratory survive this tortuous
process and reach the marketplace in the form of FDA-approved
pharmaceuticals. . . . Only patent protection can make the
innovator's substantial investment in development and clinical
testing economically rational.
Jay Dratler, Jr., Alice in Wonderland Meets the U.S. Patent
System, 38 Akron L. Rev. 299, 313-14 (2005) (footnotes
Business method patents, unlike those granted for
pharmaceuticals and other products, offer rewards that are grossly
disproportionate to the costs of innovation. In contrast to
technological endeavors, business innovations frequently involve
little or no investment in research and development. Bilski, for
example, likely spent only nominal sums to develop his hedging
method. The reward he could reap if his application were allowed
— exclusive rights over methods of managing risks in a wide
array of commodity transactions — vastly exceeds any costs he
might have incurred in devising his "invention."
"[S]ometimes too much patent protection can impede rather
than 'promote the Progress of Science and useful Arts,' the
constitutional objective of patent and copyright protection."
Lab. Corp. of Am. Holdings v. Metabolite Labs., Inc., 548
U.S. 124, 126 (2006) (Breyer, J., joined by Stevens and Souter,
JJ., dissenting from dismissal of writ of certiorari) (emphasis in
original). This is particularly true in the context of patents on
methods of conducting business. Instead of providing incentives to
competitors to develop improved business techniques, business
method patents remove building blocks of commercial innovation from
the public domain. Dreyfuss, supra at 275-77. Because they
restrict competitors from using and improving upon patented
business methods, such patents stifle innovation. When "we grant
rights to exclude
unnecessarily, we . . . limit competition with no quid pro quo.
Retarding competition retards further development." Pollack,
supra at 76. "Think how the airline industry might now be
structured if the first company to offer frequent flyer miles had
enjoyed the sole right to award them or how differently mergers and
acquisitions would be financed . . . if the use of junk bonds had
been protected by a patent." Dreyfuss, supra at 264. By
affording patent protection to business practices, "the government
distorts the operation of the free market system and reduces the
gains from the operation of the market." Sfekas, supra at
It is often consumers who suffer when business methods are
patented. See Raskind, supra at 82. Patented products are
more expensive because licensing fees are often passed on to
consumers. See Lois Matelan, The Continuing Controversy
Over Business Method Patents, 18 Fordham Intell. Prop. Med.
& Ent. L.J. 189, 201 (2007). Further, as a general matter,
"quantity and quality [of patented products] are less than they
would be in a competitive market." Dreyfuss, supra at
Patenting business methods makes American companies less
competitive in the global marketplace. American companies can now
obtain exclusionary rights on methods of conducting business, but
their counterparts in Europe and Japan generally cannot. See
Biddinger, supra at 2546-47. Producing products in the
United States becomes more expensive because American companies,
unlike their overseas counterparts, must incur licensing fees in
order to use patented business methods:
[O]nce a United States patent application for a new
method of doing business becomes publicly available, companies in
Europe and Japan may begin using the method outside the United
States, while American companies in competition with the patentee
would be unable to use the method in the United States without
incurring licensing fees. The result is that companies outside of
the United States receive the benefit of the
novel method without incurring either the research and
development costs of the inventor, or the licensing fees of the
patentee's American competitors.
Id. at 2545-46.
Another significant problem that plagues business method patents
is that they tend to be of poor overall quality. See eBay
Inc. v. MercExchange, L.L.C., 547 U.S. 388, 397 (2006)
(Kennedy, J., joined by Stevens, Souter, and Breyer, JJ.,
concurring) (noting the "potential vagueness and suspect validity"
of some of "the burgeoning number of patents over business
methods"). Commentators have lamented "the frequency with which the
Patent Office issues patents on shockingly mundane business
inventions." Dreyfuss, supra at 268; see also
Pollack, supra at 106 ("[M]any of the recently-issued
business method patents are facially (even farcically) obvious to
persons outside the USPTO."). One reason for the poor quality of
business method patents is the lack of readily accessible prior art
references. Because business methods were not patentable prior to
State Street, "there is very little patent-related prior art
readily at hand to the examiner corps." Dreyfuss, supra at
Furthermore, information about methods of conducting business,
unlike information about technological endeavors, is often not
documented or published in scholarly journals. See Russell
A. Korn, Is Legislation the Answer? An Analysis of the Proposed
Legislation for Business Method Patents, 29 Fla. St. U.L. Rev.
1367, 1372-73 (2002). The fact that examiners lack the resources to
weed out undeserving applications "has led to the improper approval
of a large number of patents, leaving private parties to clean up
the mess through litigation." Krause, supra at 97.
Allowing patents to issue on business methods shifts critical
resources away from promoting and protecting truly useful
technological advances. As discussed previously, the patent office
has been deluged with business method applications in recent years.
Time spent on such applications is time not spent on applications
which claim true innovations. When already overburdened examiners
are forced to devote significant time to reviewing large numbers of
business method applications, the public's access to new and
beneficial technologies is unjustifiably delayed.
Patenting business methods allows private parties to claim
exclusive ownership of ideas and practices which rightfully belong
in the public domain. "It is a matter of public interest that
[economic] decisions, in the aggregate, be intelligent and well
informed. To this end, the free flow of commercial information is
indispensable." Virginia State Bd. of Pharmacy v. Virginia
Citizens Consumer Council, Inc., 425 U.S. 748, 765 (1976).
Thus, "the stringent requirements for patent protection seek to
assure that ideas in the public domain remain there for the free
use of the public." Aronson v. Quick Point Pencil Co., 440
U.S. 257, 262 (1979).
Bilski's claimed method consists essentially of two
conversations. The first conversation is between a commodity
provider and a commodity consumer, while the second conversation is
between the provider and "market participants" who have "a
counter-risk position to . . . consumers." His claims provide
almost no details as to the contents of these conversations.
Like many business method applications, Bilksi's application is
very broadly drafted. It covers a wide range of means for "hedging"
in commodity transactions. If his
application were allowed, anyone who discussed ways to balance
market risks in any sort of commodity could face potential
infringement liability. By adopting overly expansive standards for
patentability, the government enables private parties to impose
broad and unwarranted burdens on speech and the free flow of ideas.
See Thomas F. Cotter, A Burkean Perspective on Patent
Eligibility, 22 Berkeley Tech. L.J. 855, 880-82 (2007) (arguing
that overly expansive patent eligibility standards can result in
the granting of patents that threaten free speech, privacy and
other constitutionally-protected rights); John R. Thomas, The
Future of Patent Law: Liberty and Property in the Patent Law,
39 Hous. L. Rev. 569, 589 (2002) (arguing that "the patent law
allows private actors to impose more significant restraints on
speech than has ever been possible through copyright"); see
also Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm'n
of New York, 447 U.S. 557, 569-70 (1980) (The First Amendment
mandates that restrictions on free speech in commercial
transactions be "no more extensive than necessary.").
To the extent that business methods are deemed patentable,
individuals can face unexpected potential infringement liability
for everyday conversations and commercial interactions. "[I]mplicit
in the Patent Clause itself [is the understanding] that free
exploitation of ideas will be the rule, to which the protection of
a federal patent is the exception." Bonito Boats, Inc. v.
Thunder Craft Boats, Inc., 489 U.S. 141, 151 (1989). In the
wake of State Street, too many patent holders have been
allowed to claim exclusive ownership of subject matter that
rightfully belongs in the public domain.
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. See Cotter,
supra at 875 (noting that the physical transformation test
for patentability can be problematic because "[i]n a material
universe, every process will cause some sort of physical
transformation, if only at the microscopic level or within the
human body, including the brain"). Through clever draftsmanship,
nearly every process claim can be rewritten to include a physical
transformation. Bilski, for example, could simply add a requirement
that a commodity consumer install a meter to record commodity
consumption. He could then argue that installation of this meter
was a "physical transformation," sufficient to satisfy the
majority's proposed patentability test.
Even as written, Bilski's claim arguably involves a physical
transformation. Prior to utilizing Bilski's method, commodity
providers and commodity consumers are not involved in transactions
to buy and sell a commodity at a fixed rate. By using Bilski's
claimed method, however, providers and consumers enter into a
series of transactions allowing them to buy and sell a particular
commodity at a particular price. Entering into a transaction is a
physical process: telephone calls are made, meetings are held, and
market participants must physically execute contracts. Market
participants go from a state of not being in a commodity
transaction to a state of being in such a transaction. The
majority, however, fails to explain how this sort of physical
transformation is insufficient to satisfy its proposed patent
The majority suggests that a technological arts test is nothing
more that a "short-cut" for its machine-or-transformation test.
Ante at 29. To the contrary, however, the two tests are
fundamentally different. Consider U.S. Patent No. 7,261,652, which
is directed to a method of putting a golf ball, U.S. Patent No.
6,368,227, which is directed to a method of swinging on a swing
suspended on a tree branch, and U.S. Patent No. 5,443,036, which is
directed to a method of "inducing cats to exercise." Each of these
"inventions" involves a physical transformation that is central to
the claimed method: the golfer's stroke is changed, a person on a
swing starts swinging, and the sedentary cat becomes a fit feline.
Thus, under the majority's approach, each of these inventions is
patent eligible. Under a technological arts test, however, none of
these inventions is eligible for patent protection because none
involves any advance in science or technology.9
Regardless of whether a claimed process involves a "physical
transformation," it should not be patent eligible unless it is
directed to an advance in science or technology. See
Benson, 409 U.S. at 64-71 (finding a process unpatentable
even though it "transformed" binary-coded decimals into pure binary
numbers using a general purpose computer). Although the Supreme
Court has stated that a patentable process will usually involve a
transformation of physical matter, see id. at 70, it
has never found a process patent eligible which did not involve a
scientific or technological innovation. See Diehr,
450 U.S. at 192-93 (finding a process patentable where it involved
new technology for curing rubber).
The majority refuses to inject a technology requirement into the
section 101 analysis because it believes that the terms
"technological arts" and "technology" are "ambiguous." See
ante at 21. To the contrary, however, the meaning of these
terms is not particularly difficult to grasp. "The need to apply
some sort of 'technological arts' criterion has hardly led other
countries' and regions' patent systems to grind to a halt; it is
hard to see why it should be an insurmountable obstacle for ours."
Cotter, supra at 885. As discussed more fully in section
III, a claimed process is technological to the extent it applies
laws of nature to new ends. See Benson, 409 U.S. at 67 ("'If there
is to be invention from . . . a discovery, it must come from the
application of the law of nature to a new and useful end.'"
(quoting Funk Bros., 333 U.S. at 130)). By contrast, a
process is non-technological where its inventive concept is the
application of principles drawn not from the natural sciences but
from disciplines such as business, law, sociology, or psychology.
See Thomas (1999), supra at 1168 ("[F]ew of us would
suppose that inventions within the domain of business, law or fine
arts constitute technology, much less patentable technology."). The
inventive aspect of Bilski's claimed process is the application of
business principles, not laws of nature; it is therefore
non-technological and ineligible for patent protection.
Unlike a technological standard for patentability, the
majority's proposed test will be exceedingly difficult to apply.
The standard that the majority proposes for inclusion in the
patentability lexicon — "transformation of any physical
object or substance, or an electronic signal representative of any
physical object or substance," ante at 28 — is
unnecessarily complex and will only lead to further uncertainty
regarding the scope of patentable subject matter. As noted in In
re Nuijten, 500 F.3d 1346, 1353 (Fed. Cir.
2007), defining the term "physical" can be an "esoteric and
metaphysical" inquiry. Indeed, although this court has struggled
for years to set out what constitutes sufficient physical
transformation to render a process patentable, we have yet to
provide a consistent or satisfactory resolution of this issue.
We took this case en banc in a long-overdue effort to resolve
primal questions on the metes and bounds of statutory subject
matter. The patent system has run amok, and the USPTO, as well as
the larger patent community, has actively sought guidance from this
court in making sense of our section 101 jurisprudence. See
Supplemental Br. of Appellee at 3 ("[The Federal Circuit] should
clarify the meaning of State Street and AT&T, as
they have been too often misunderstood."); Br. of Fin. Serv. Indus.
at 1 ("The rise of [business method patents] in recent years has .
. . led to uncertainty over the scope of the patents granted and,
more fundamentally, the definition of patentable subject matter
itself. [We] seek a workable standard defining the scope of
patentable subject matter, one that . . . provides clear guidance
to the Patent and Trademark Office . . . and the public."); Br. of
Samuelson Law, Tech. and Public Policy Clinic at 1 ("Ever since
State Street, the [USPTO] has been flooded with applications
for a wide variety of non-technological 'inventions' such as
arbitration methods, dating methods, tax-planning methods, legal
methods, and novel-writing methods. These applications have eroded
public confidence in the patent system and driven up the cost and
decreased the return for applicants seeking legitimate
technological patents." (footnote omitted)); Br. of Assoc. of Am.
Medical Colleges at 29 (arguing that "broad swaths of the public
and certain industry sectors" have lost respect for the patent
system and that "[the Federal Circuit] should act, even if its
actions mean unsettling the settled expectations of some"). The
majority, however, fails to enlighten three of the thorniest
issues in the patentability thicket: (1) the continued viability of
business method patents, (2) what constitutes sufficient physical
transformation or machine-implementation to render a process
patentable, and (3) the extent to which computer software and
computer-implemented processes constitute statutory subject matter.
The majority's "measured approach" to the section 101 analysis,
see ante at 25, will do little to restore public
confidence in the patent system or stem the growth of patents on
business methods and other non-technological ideas.
Where the advance over the prior art on which the applicant
relies to make his invention patentable is an advance in a field of
endeavor such as law (like the arbitration method in
Comiskey), business (like the method claimed by Bilski) or
other liberal — as opposed to technological — arts, the
application falls outside the ambit of patentable subject matter.
The time is ripe to repudiate State Street and to
recalibrate the standards for patent eligibility, thereby ensuring
that the patent system can fulfill its constitutional mandate to
protect and promote truly useful innovations in science and
technology. I dissent from the majority's failure to do so.
||The Statute of Monopolies "grew out of abuses in the grant of
exclusive franchises in various lines of business such as trading
cards, alehouses and various staple products." Robert P. Merges,
As Many as Six Impossible Patents Before Breakfast: Property
Rights for Business Concepts and Patent System Reform, 14
Berkeley Tech. L.J. 577, 585 (1999).
||Congress did substitute the word "process" for "art" in the
1952 Act, but "[a]nalysis of the eligibility of a claim of patent
protection for a 'process' did not change with the addition of that
term to § 101." Diamond v. Diehr, 450 U.S. 175, 184
||Article I, § 8 provides that "The Congress shall have
Power . . . To promote the Progress of Science and useful Arts by
securing for limited Times to Authors and Inventors the exclusive
Right to their respective Writings and Discoveries." The patent
power "is the only one of the several powers conferred upon the
Congress which is accompanied by a specific statement of the reason
for it." Yaun, 188 F.2d at 380.
||"[D]espite the assertions in State Street and
Schrader, very few in the patent community believe that
business methods have always been patentable. To the contrary, the
dominant view is that the law has changed, and that the definition
of patentable subject matter is now wider than it once was." R.
Carl Moy, Subjecting Rembrandt to the Rule of Law: Rule-Based
Solutions for Determining the Patentability of Business
Methods, 28 Wm. Mitchell L. Rev. 1047, 1060 (2002) (footnotes
omitted); see also Rochelle Cooper Dreyfuss, Are Business Method
Patents Bad for Business?, 16 Santa Clara Computer & High
Tech. L.J. 263, 265-66 (2000) (State Street gave "judicial
recognition to business method patents."). Over the course of two
centuries, a few patents issued on what could arguably be deemed
methods of doing business, see, e.g., U.S. Patent No.
5,664,115 ("Interactive Computer System to Match Buyers and Sellers
of Real Estate, Businesses and Other Property Using the Internet"),
but these patents were aberrations and the general rule, prior to
State Street, was that methods of engaging in business were
ineligible for patent protection. See Comiskey, 499
F.3d at 1374 (noting that "[a]t one time, '[t]hough seemingly
within the category of process or method, a method of doing
business [was] rejected as not being within the statutory
classes.'" (quoting State Street, 149 F.3d at 1377)). One
commentator has noted that although the United States Patent and
Trademark Office ("USPTO") "in an attempt to deflect criticism
[has] issued an apologia . . . asserting that business method
patents are as old as the United States patent system," this
document is fundamentally flawed. See Pollack, supra
at 73-75. She explains:
The USPTO wants us to believe that it found no records
of patents whose points of invention were business methods, because
no one had time to invent any new business methods until the human
race had run its mechanical ingenuity to the peak of computer
software; seemingly we were all too busy inventing the computer to
think about anything else? especially new ways of doing business. I
thought that we granted patents because, otherwise, people would be
too busy making money by running businesses to take time out to
invent anything except business methods. The USPTO [document],
furthermore, is eliding the printed matter exception to patentable
subject matter with the business method exception.
Id. at 75 (footnote omitted).
||The claims in Patton were explicitly rejected on the
basis that they were directed to a business method, while the
claims in Maucorps and Meyer were rejected as
attempts to patent mathematical algorithms. Subsequently, however,
this court stated that the claimed processes in Maucorps and
Meyer were directed toward business systems and should
therefore not be considered patent eligible. In re Alappat,
33 F.3d 1526, 1541 (Fed. Cir. 1994) (en banc). We noted that
"Maucorps dealt with a business methodology for deciding how
salesmen should best handle respective customers and Meyer
involved a 'system' for aiding a neurologist in diagnosing
patients. Clearly, neither of the alleged 'inventions' in those
cases falls within any § 101 category." Id.
||Laws of nature are those laws pertaining to the "natural
sciences," such as biology, chemistry, or physics. See,
e.g., Webster's New International Dictionary 1507 (3d
ed. 2002) ("Natural sciences" are the "branches of science ([such]
as physics, chemistry, [or] biology) that deal with matter, energy,
and their interrelations and transformations or with objectively
measured phenomena."). They must be distinguished from other types
of law, such as laws of economics or statutory enactments. Laws of
nature do not involve "judgments on human conduct, ethics, morals,
economics, politics, law, aesthetics, etc." Musgrave, 431
F.2d at 890; see also Joy Y. Xiang, How Wide Should the
Gate of "Technology" Be? Patentability of Business Methods in
China, 11 Pac. Rim L. & Pol'y J. 795, 807 (2002) (noting
that State Street's "'useful, concrete and tangible result' test is
inconsistent with the 'application of the law of nature' patent
eligibility scope outlined by the U.S. Supreme Court and [the
Federal Circuit prior to State Street].").
||One commentator notes that both Japan and the Republic of Korea
explicitly define an "invention" as the application of a law of
nature, and argues that the United States should follow a similar
approach to patentability. See Andrew A. Schwartz, The
Patent Office Meets the Poison Pill: Why Legal Methods Cannot be
Patented, 20 Harv. J. Law & Tech. 333, 357 (2007).
||Congress has acted to ameliorate some of the negative effects
of granting patents on methods of doing business. It passed the
American Inventors Protection Act (commonly referred to as the
First Inventor Defense Act) which provides an affirmative defense
against a business method patent infringement action if the
defendant "acting in good faith, actually reduced the subject
matter to practice at least 1 year before the effective filing date
of such patent, and commercially used the subject matter before the
effective filing date of such patent." See 35 U.S.C. §
273. Even where a defendant may qualify for this defense, however,
he "still must engage in expensive litigation where [he] bears the
burden of affirmatively raising and proving the defense."
See Nicholas A. Smith, Business Method Patents and Their
Limits: Justifications, History, and the Emergence of A Claim
Construction Jurisprudence, 9 Mich. Telecomm. & Tech. L.
Rev. 171, 199 (2002).
||The majority's approach will encourage rent-seeking on a broad
range of human thought and behavior. For example, because
organizing a country into a democratic or socialist regime clearly
involves a physical transformation, what is to prevent patents from
issuing on forms of government?
|Authored by: ilde on Sunday, November 09 2008 @ 09:57 PM EST|
|So PJ can find them|
[ Reply to This | # ]
|Authored by: Anonymous on Sunday, November 09 2008 @ 10:12 PM EST|
|Algorithms such as used in cryptography - ARE PROTECTED BY COPYRIGHT. Exactly|
as they are!
The Pro-Patent folks seem to forget all about copyright and that software is a
story, that depends on the chip design in order to run. If the software is not
written right for the machine, then it is nothing. Chip designers really hold
all the IP cards regarding patents of the use of their design. The software
writers then are beholden to the invention of the chips, and write software that
is a story (copyright).
So - when are these folks going to look at copyright instead of patents and
leave it at that?
[ Reply to This | # ]
|Authored by: Aladdin Sane on Sunday, November 09 2008 @ 10:16 PM EST|
|Comments not on topic can go here.
There are instructions on how to make
clickable links here.
"Then you admit confirming not denying you
ever said that?"
"NO! ... I mean Yes! WHAT?"
"I'll put `maybe.'"
[ Reply to This | # ]
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|Authored by: Aladdin Sane on Sunday, November 09 2008 @ 10:18 PM EST|
|Discuss Groklaw News Picks here.
Please say which News Pick you are
"Then you admit confirming not denying you ever
"NO! ... I mean Yes! WHAT?"
"I'll put `maybe.'"
[ Reply to This | # ]
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|Authored by: treed on Monday, November 10 2008 @ 03:41 AM EST|
|What I have never understood is how software can be patented when mathematics|
can not yet software is just math. Lambda calculus, Turing machine,
Church-Turing equivalence, etc. You can take a patented algorithm like, say, MP3
encoding, and express it in a purely functional programming language like
Haskell at which point the whole thing is a machine executable mathematical
equation. Then what? I guess the problem is that someone would have to explain
it to the judge. And that won't be so easy.
[ Reply to This | # ]
|Authored by: Winter on Monday, November 10 2008 @ 05:35 AM EST|
The whole Software Patents are coming back, worldwide, in the form of an
international ACTA treaty. Bypassing all parliaments.
ACTA may turn
out more far reaching than the proposed IPRED 2 Directive, containing criminal
measures. IPRED 2 has been heavily critized. Both chambers of the Dutch
Parliament unanimously rejected it. The European Parliament debated it for over
a year, in three committees and in plenary. It is almost bewildering to see that
the same content is now negotiated behind closed doors and
Documents published by Canadian
Analysis Anti-Counterfeiting Trade Agreement (from which the above quote was
Some say the sun rises in the east, some
say it rises in the west; the truth lies probably somewhere in between.
[ Reply to This | # ]
|Authored by: Winter on Monday, November 10 2008 @ 06:32 AM EST|
|There has even been a patent issued on a method for obtaining a patent. See U.S.|
Patent No. 6,049,811."
Many commenters on GL were dreaming about getting a patent on getting a patent.
But this is already issued.
Some say the sun rises in the east, some say it rises in the west; the truth
lies probably somewhere in between.
[ Reply to This | # ]
|Authored by: reiisi on Monday, November 10 2008 @ 08:15 AM EST|
|It bugs me that people so easily forget the basics.|
What are patents and copyrights?
They transfer governmental power and authority to people who are neither
elected nor appointed by people who are elected. Specifically, they grant the
patent or copyright holder authority to collect fees for patent uses and to
determine who gets to use a patent when and how.
It used to be that the "property" in question was considered to be a
the public commons, neither technology nor art being produced in a vacuum.
And, since it was part of the commons, the inducement for people to share
what they had done with that piece was limited control, limited both in time
The reason for the limits was that, unlike a piece of land, technology and are
are inherently abstract, and are thus inherently more easily bent to purposes
of tyranny and oppression than "mere" physical property.
It's not that algorithms are part of nature, and it's not how easy it is to
discover an algorithm. It's the reach of the patent when applied. Likewise,
with copyright. The biggest reason for limiting copyright terms and for
chaining the copyright to fair use was the potential for impacting freedom of
speech (and attempting to impact freedom of thought).
That's why copyright was supposed to be registered.
That's why patents were supposed to require an implementation.
I would personally have no problem with software patents, if and only if the
patent was strictly applied to a specific implementation. Ergo, source code
would have to be submitted with the claims. (Source code, after all, is the
closest thing in software to a diagram.) and the patent would only apply to
the source code submitted, and perhaps to any strictly blind mechanically
translations of said source code to a language similar to the original.
But then you have an issue of what constitutes strictly blind translation. And
how similar the target languages have to be. And quite a few other issues.
The further we think about this, the clearer it becomes that copyright is more
appropriate for software. (Discussion of the _general_ _purpose_ machine
which is required to turn the object code into a functioning virtual machine
further pushes us towards copyright.)
Then people come up with reason why copyright is not appropriate, which I
don't have time to go over, but there it is: the suggestion some make that we
need something kind of between patent and copyright for software. Well, ...
RMS was right. But we don't live in an ideal world, where people in general
will work for the joy of bringing value into the world. So he was right again:
The GPL is basically (close to) what the US government should have provided
as an alternative to the copyright (with fair use) on the one hand and the
patent (but only of a specific source, plus mechanical translations and limited
versionings) on the other.
[ Reply to This | # ]
|Authored by: Observer on Monday, November 10 2008 @ 12:05 PM EST|
| > And if I might be allowed, Amen."
You are allowed.
"Preach it, brother!"
[ Reply to This | # ]
- s/brother/sister/ - Authored by: Anonymous on Tuesday, November 11 2008 @ 08:50 AM EST
|Authored by: bb5ch39t on Monday, November 10 2008 @ 01:42 PM EST|
Copyright law valorizes copying as a rare and
noteworthy event. On the Internet, copying is automatic, massive, instantaneous,
free, and constant. Clip a Dilbert cartoon and stick it on your office door and
you're not violating copyright. Take a picture of your office door and put it on
your homepage so that the same co-workers can see it, and you've violated
copyright law, and since copyright law treats copying as such a rarified
activity, it assesses penalties that run to the hundreds of thousands of dollars
for each act of infringement.
There's a word for all the stuff we do with
creative works — all the conversing, retelling, singing, acting out, drawing,
and thinking: we call it culture.
Culture's old. It's older than
The existence of culture is why copyright is valuable. The fact
that we have a bottomless appetite for songs to sing together, for stories to
share, for art to see and add to our visual vocabulary is the reason that people
will pay money for these things.
He made some interesting
points. Hope I didn't violate his copyright with the above quote.
[ Reply to This | # ]
|Authored by: Ian Al on Tuesday, November 11 2008 @ 06:13 AM EST|
|I'm still not happy with discussing this revision of the interpretation of a
statute that changed key words in the original statute. I've found this thing
called a US Constitution and it says|
To promote the Progress of
Science and useful Arts, by securing for limited Times to Authors and Inventors
the exclusive Right to their respective Writings and
Authors express and protect their expression with
copyright. Science (engineering, if you must know) invents. By the time the
relevant US code came into being, the idea of protecting discoveries had been
displaced by protecting inventions.
TITLE 35 > PART II >
CHAPTER 10 > § 101
could rewrite the Constitution thus 'To promote the Progress of Engineering and
useful Arts, by securing for limited Times to Authors and Inventors the
exclusive Right to their respective Writings and Inventions'
§ 101. Inventions patentable
Whoever invents or
discovers any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
(scientific or otherwise) of a natural fact should not be protectable.
Discovering that the world is round should not prevent others circumnavigating
Suppose someone purchases a submarine patent. The original inventor (or
his company) has decided that a one-time payment is sufficient recompense for
the skill of inventing. The purchaser cannot 'promote the Progress of Science
and useful Arts' in any way by exercising his ownership of the patent rights. If
he just lies in wait until a useful member of society invents the same thing and
then tries to sue, he is preventing 'the progress of Science' in an
anti-constitutional way. The only way he could be within the constitutional
framework is if he is already using the invention in a useful way (e.g. selling
a patented widget) or is licencing the invention to someone else who is
successfully selling the widget. If the licence fee is so large that the widget
cannot be sold at a profit, then, again, that is anti-progress and, thereby,
If the new patent owner was not able to usefully employ
the invention in a business activity then the original inventor would not be
able to benefit from the invention and would not have been able to sell it on. I
think the selling-on of patent rights is not fully within the spirit of the
Constitution, but indirectly promotes the inventor's activities and needs to be
permitted within the law.
I think that the following guidelines can be
constructed on the basis of the Constitution and subsequent legislation, that
could address some of the failings of current patent use.
1. If the
patent-holder is not usefully using the invention successfully in a business or
is not similarly licencing the invention to other companies then the patent
should be voided. The courts should be able to serve an injunction on the USPTO
to do that unless the patent holder can present facts in mitigation (e.g. a
significant previous history of useful business use of the patent).
the patent-holder cannot show that an alleged violation of his patent rights can
be determined by the clear meaning of the patent then violation cannot have
occurred. The judge should use two tests in his determination; A) that the
patent is sufficient for the defendant to have used it for his own product (on
the basis of expert witness testimony), B) that the patent is written in such a
way as to highlight the invention and make it clear to the reader. The judge can
use his own judgement to determine if the key elements are obfuscated in such a
way as to prevent 'the Progress of Science and useful Arts'.
3. Is the
invention complete and useful in its own right? If the use of the invention
directly produces sheets of vulcanised rubber or is a better mousetrap then it
is complete. How about a piece of software that depends on an algorithm to
produce electrical signals representing high quality sound, but which don't
require high bandwidths to get to the sound reproducing device? The end product
is useful and saleable. The vats of molten rubber and sulphurous compounds are
not the complete process in producing vulcanised rubber tyres (aka, tires) but a
real vulcanised-rubber material is produced direct from the vats. That software
does not produce the saleable item or material. The item is only saleable
because of its expression and content. Without the sound-card, which is not part
of the invention and is not a specific device, no new composition of matter
(even one as etheric as sound waves in air) or device is produced. I think it
would fail test 3. If it were an integrated circuit that took analogue
electrical signals in and created a stream of data suitable for saving as a
digital file on a generic data storage device I would have to think long and
hard before coming to a conclusion. Does the material existance of a file on a
hard disk constitute enough of a material production process to constitute a
complete invention? What is it about the invention which is innovative and not
obvious to one skilled in the art of audio engineering? I don't think an audio
compression chip is patentable for the audio compression. There might be
something in the chip design, however, which is a protectable invention and, if
that was essential to the compression of sound data, it might serve to protect
the use of the chip as well as the manufacture. Did I mention, I am not a
When it comes to business processes, I think a combination of Test 3.
and the statute
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent makes them non-patentable.
It is only by ignoring the context of the word 'process' that business processes
were ever considered patentable. Heating latex with sulphurous compounds is a
process to produce vulcanised rubber. A business process produces neither device
nor compound because it is incomplete and immaterial (i.e. it does not employ
material). I think the judges were captivated by the way the word 'process'
could be interpreted at the time they considered it and failed to observe the
clear intent of the law and the Constitution to protect inventions concerning
devices or materials. This recent decision has gone a long way to putting that
right. Perhaps it is up to the Supremes to extend the thinking, the Constitution
and the law to software and other ephemeral patents.
PS, I was infuriated by
one judge saying they had always done it this way and ignoring the law and the
Constitution. I would remind him (or her) that, if the law is a ass, then it is
his job to make it not so.
Linux: Viri can't hear you in free space.
[ Reply to This | # ]
|Authored by: Anonymous on Tuesday, November 11 2008 @ 01:08 PM EST|
|In what way do injunctions and unworkable royalty conditions advance the arts|
What's the point of "opening up" if you then place a barrier (possibly
a very significant barrier) for everyone else?
Why are we given government backed artificial monopolies to allow giants not to
stand on our shoulders, as we stood on those of others?
What about the next 20 people or geniuses (and in some cases the prior 20) that
were working along similar lines and now will have their hands tied because they
didn't publish or patent ahead of the First Guy.
Patents stimulate instead of stifle only when inventions would otherwise not be
created/discovered, brought to market, contribute to an economy, contribute to
improved standard of living, etc, as efficiently as with other options. This
generally might only be the case when you have a limited number of inventors and
the costs would be too large (in particular, the costs would not be shared among
society). Let's not forget that there are alternatives to protect investments
besides patents (eg, trade secrets) and which do not hand-cuff others. Look at
what happens when you attempt to "start up and stimulate" an engine
that is already running. Patents can also add muck to an otherwise more
lubricated complex interacting society.
It should be clear that software patents should be staked right through the
heart, buried, and sealed up in a deep cavern somewhere. FOSS makes that clear.
And FOSS hasn't even reached its stride because so many users have yet to be
exposed to it and so many tools have yet to be built to enable such users to
exploit the source code and other benefits of FOSS.
At the very least, FOSS and similar efforts should be exempted from as much of
the damage from patents as possible.
Let's not forget that patents are government granted monopolies. There is no
free market there. We might in fact be greatly hampering the markets. Was the
Constitution asking for this?
Finally, I want to echo what others (and the Court?) have said that some
devices/sw combinations perhaps should be allowed to be patented but the
"software" itself would not be.
However, I don't think patent law should be written to allow those devices to be
restricted so that only certain types of software can be installed on them
[those restrictions may come from other than patent law as far as this
particular opinion is concerned]. Software is too diverse. Changing software can
change many fundamental aspects of what many devices are capable of doing or
how. In other words, the first to build a particular type of material device
should not be allowed to restrict the many types of uses of it even when
fundamental behavior of that device would otherwise be changed as might happen
through changes in the software. I think current patent law and this recent
court ruling support this view, but gotta mention it just in case [IANAL.. etc]
This reply covers ground outside the scope of this court ruling, obviously.
[ Reply to This | # ]
|Authored by: Jose on Tuesday, November 11 2008 @ 03:32 PM EST|
|The digital phenomenon has made it so that something close to human thought can|
be expressed (just as a story is conceived and expressed) and then translated
automatically so as to define the way many inventions work without the need to
experiment with physical materials. The implementation of the functionality
component of the invention thus is no longer limited to analog means and related
costly material handling/experimentation but is developed and refined from
normal collaboration without even accessing material objects beyond the computer
keyboard and screen -- the functionality is told.
It thus becomes possible for there to be many more inventors and have the
functionality of the invention be developed very inexpensively (distributed
The key here isn't *digital vs analog* as much as it is, I think, *costs*. One
aspect of the invention is costly (the materials part), and the other is not
costly when you amortize properly (across world-wide inventors collaborating).
I think costs should play an important role in defining what is patentable and
to what degree should monopoly rights be awarded.
[ Reply to This | # ]
|Authored by: Anonymous on Wednesday, November 12 2008 @ 04:17 AM EST|
The TeX document processing system developed by Donald Knuth
memory here, hope it still holds) has a very peculiar definition of what
constitutes a copy of the TeX program:
anything that produces the
correct output for a given special input
(He published the required
input and output in "The TeXbook").
That is, if I could write my own
program that correctly processes the test file, I could without violating
copyright name it TeX.
I always thought of this as charming
idiosyncracy and a demonstration of the man's commitment to the academic ideal.
Am I wrong? Does it in fact have a basis in law?
Because if so, the TeX
actually copyrighted is purely abstract, and not the lines of code the DK
actually wrote, all those years ago. But that is surely wrong, so that's why I
think DK doesn't actually convey copyright at all with this gesture.
[ Reply to This | # ]
|Authored by: vortex on Sunday, November 16 2008 @ 09:03 PM EST|
I have some sympathy with Rader's dissent—perhaps it would have been
better for the court to simply rule that Bilski claimed an abstraction, which is
not patentable, and leave it at that—and I'll reflect on Rader's position
some more below, but I find Mayers' dissent the most thought-provoking of the
opinions. For all that I have reservations about its correctness (as a legal
opinion), it is also the one closest to where I would like the law to be. We
must not, however, allow our desire for better law to stand in the way of
understanding what the law is. Only the legislature can change the
law; if the law, as it stands, properly does allow patents where we would not
have them, we need to recognise that and begin the task of persuading the
legislature to change it.
I should first deal with the least
satisfactory point that Mayers raises: the paucity of patents that have issued,
in the new category. It is true that business method patents have been of
dreadful quality: as Mayers says
One reason for the poor
quality of business method patents is the lack of readily accessible prior art
references. Because business methods were not patentable prior to State Street,
"there is very little patent-related prior art readily at hand to the examiner
corps." … Furthermore, information about methods of conducting business,
unlike information about technological endeavors, is often not documented or
published in scholarly journals.
all of which, indeed, may
justly be said of software in the same context. However, much the same could be
said of a new field of endeavour, when our knowledge of it first becomes good
enough to bear useful fruit.
One could, certainly, argue that an area
in the throes of its first usefullness should be exempt from patents until a
background of competence has been built up – against which to judge
whether there is any lack of innovation in need of patents as remedy – and
that same background would be what the patent office needs, to examine patents
competently. However, as the law stands, the declared intent is to provide
patents, to stimulate investigation of such a new field (even if such would
arise without artificial stimulants), from the outset; in this view, the patent
office's lack of expertise in the new field is a minor misfortune which shall
soon enough be remedied by the very problem it causes – the flood of new
patent applications (and the legislative history as they get sorted out in the
courts) should educate the examiners. I do not for a moment believe in that
fiction, but it is how the law sets out to deal with new fields of technology.
The patent office's failure to do a good job of examination is not, at least in
the eyes of the law, grounds for excluding a novel category of subject matter
One of the areas where there is remarkably little
difference between Rader and Mayers is in their view of the test their
colleagues have brought to bear in Bilski: as Mayers says:
the physical transformation test for patentability can be problematic because
"[i]n a material universe, every process will cause some sort of physical
transformation, if only at the microscopic level or within the human body,
including the brain"
and, indeed, Bilski might have argued
past such a test had his patent been drafted against the expectation of such a
Entering into a transaction is a physical process:
telephone calls are made, meetings are held, and market participants must
physically execute contracts. Market participants go from a state of not being
in a commodity transaction to a state of being in such a transaction. The
majority, however, fails to explain how this sort of physical transformation is
insufficient to satisfy its proposed patent eligibility standard.
I imagine the courts shall, in practice, come up with some
way of delineating "physical" more closely; but it shall be argued, not entirely
without justice, that they are straining to make a distinction where none
exists. Indeed, I shall not be surprised if the result of the present ruling
is, within some few years, an appeal to the Supreme Court to over-turn the
application of some such "physicality" hair-splitting; nor shall I be surprised
if the Supreme Court does over-turn it (and Bilski with it). So the dissenting
judges are right to express concern over this test.
So let us turn to
Mayers' proposed remedy—which is a step in the right direction, although I
am inclined to the view that it yet remains problematic. The main thrust of
this is to shift the question from "physical transformation" to "technology",
effectively encoding physicality in terms of "laws of nature":
What the framers described as "useful arts," we in modern times call
- "The term 'useful arts' as used in the Constitution
… is best represented in modern language by the word 'technology.'"
- "the term 'useful arts' was commonly used in contrast to the ideas
of the 'liberal arts' and the 'fine arts,' which were well-known ideas in the
- Applying laws of nature to new and useful ends
is nothing other than "technology." See, e.g., Microsoft Computer Dictionary
513 (5th ed. 2002) (The definition of "technology" is the "application of
science and engineering to the development of machines and procedures in order
to enhance or improve human conditions.") … "Technology" is the
"application of science, especially to industrial or commercial objectives."
- Methods of doing business do not apply "the law of nature to a new
and useful end." Because the innovative aspect of such methods is an
entrepreneurial rather than a technological one, they should be deemed
ineligible for patent protection.
- Unlike a technological standard
for patentability, the majority's proposed test will be exceedingly difficult to
The point is a good one for dealing with a business
method, but I am forced to observe that software is at present widely regarded
as a branch of technology—indeed, as the most prominent branch of
technology in the modern world, the part of "information technology" in which
the general public sees changes it can comprehend as "innovative". Thus a
"physicality" test would better serve those opposed to software patents than a
"technological" test (and conversely); still, that is our problem, not Mayers'
(although he seems to suppose his remedy would preclude software patents).
Both Mayers and Rader warn of the ambiguity of the majority's test:
… although this court has struggled for years to set
out what constitutes sufficient physical transformation to render a process
patentable, we have yet to provide a consistent or satisfactory resolution of
and, to be sure, ambiguity is a major problem.
The majority refuses to inject a technology requirement
into the section 101 analysis because it believes that the terms "technological
arts" and "technology" are "ambiguous."
However, I am
afraid, the combined ingenuity of lawyers and those seeking patents would
doubtless find means to prove the majority right—although the same shall
apply to their physicality test, as described above—and, as noted
previously, software can more easilly be characterised as technology than as
physical. I can, however, grant that there is some justice in Mayers' assertion
(hmm…my notes indicate he was quoting someone else):
"The need to apply some sort of 'technological arts' criterion has hardly led
other countries' and regions' patent systems to grind to a halt; it is hard to
see why it should be an insurmountable obstacle for ours."
but this is no help to the judiciary, which merely enforces the laws: that other
nations have managed to restrict patents to technology (in so far as they have)
is a consequence of their laws using language that explicity (and carefully)
delineats such a restriction. Mayers does indeed argue that the available
precedents do support a technology test: however, the last legislation on the
subject dates from an era when all technology was physical. Consequently, the
statute does not give an explicit and carefully-drawn specification of what
counts as technological; nor can reference to the case law that informed that
legislation give us any clarity about ambiguities that have only emerged since.
This is why patent applicants and their lawyers shall be able to stretch the
word technology to include things Mayers clearly does not accept as
patent-eligible subject matter.
Mayers endeavours to forestall
ambiguity in a technology test by relating it to "natural laws":
By contrast, a process is non-technological where its inventive concept is the
application of principles drawn not from the natural sciences but from
disciplines such as business, law, sociology, or psychology. … The
inventive aspect of Bilski's claimed process is the application of business
principles, not laws of nature; it is therefore non-technological and ineligible
for patent protection.
- Indeed, the Supreme Court has repeatedly
emphasized that what renders subject matter patentable is "the application of
the law of nature to a new and useful end."
- "Natural sciences" are
the "branches of science ([such] as physics, chemistry, [or] biology) that deal
with matter, energy, and their interrelations and transformations or with
objectively measured phenomena."
- They must be distinguished from
other types of law, such as laws of economics or statutory enactments.
- As the Supreme Court has made clear, "the act of invention …
consists neither in finding out the laws of nature, nor in fruitful research as
to the operation of natural laws, but in discovering how those laws may be
utilized or applied for some beneficial purpose, by a process, a device or a
machine." United States v. Dubilier Condenser Corp., 289 U.S. 178, 188 (1933).
Delineating a technology test in such terms depends, however, on
a decision about which fields of study count as natural science. I can happilly
accept that business, law and sociology are not natural science; but we cannot
so readilly (much as I am tempted to) write off psychology when those who have
applied it to marketing find it so excellently (if, to me, disturbingly)
effective; which surely has produced "objectively measured phenomena". Mayer
excludes economics, although it often (in ways that make me think of cargo
cults) puts on the garb of "natural science" and is taken entirely seriously by
governments, and even courts. What of computer science ? We may consider
it a branch of mathematics, even of pure rather than applied mathematics, but
the practical application of its principles is certainly widely considered
While Mayers' proposal has its virtues, the majority's
concerns about ambiguity are not without foundation: and overcoming that strikes
me as problematic, at least in the absence of an overt lead from the
legislature, addressing the vast proliferation of types of technology
that has arisen since 1952. Not only shall the definition of "technological" be
subject to gaming, but the application of such a test shall be subject to
accusations, following Rader, of inventing tests not articulated by the plain
words of the law.
Speaking of Rader, whose dissent brings out another aspect of
the problem, that I believe is crucial, let me now pause to consider that
Like Mayers, Rader is scathing about the ambiguity of the
majority's physicality test:
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? … 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
He is clearly unpersuaded that the language
supports any such test as either the majority or Mayers propose.
Rader's argument is essentially that the legislature deliberately left room for
patents to apply to novel categories of technology; so the tests proposed by the
majority and Mayer, by setting out to impose categoric limits, run contrary to
In simple terms, the statute does not mention
"transformations" or any of the other Industrial Age descriptions of subject
matter categories that this court endows with inordinate importance today. The
Act has not empowered the courts to impose limitations on patent eligible
subject matter beyond the broad and ordinary meaning of the terms process,
machine, manufacture, and composition of matter. It has instead preserved the
promise of patent protection for still unknown fields of invention.
He goes on to argue that this is the position the Supreme
Court has taken (using "limits on" to mean "exclusions from"):
The Supreme Court has counseled that the only limits on
eligibility are inventions that embrace natural laws, natural phenomena, and
abstract ideas. … The Supreme Court stated that all of the transformation
and machine linkage explanations simply restated the abstractness rule.
and thus (with excellent brevity) that
When considering the eligibility of "processes," this court should focus on the
potential for an abstract claim.
in which last, I confess,
I find some merit.
All the same "this court", the highest authority
specializing in patents, has a responsibility for providing lower courts with
practical, clear guidelines on eligibility issues. Such guidelines must
condense the legislation and the rich tapestry of prior case law into plain
rules that can be applied straightforwardly in the vast majority of cases, with
a clear delineation of when their application should be sufficient. When it is
not, lower courts must look to the details for themselves; and a central guide
to this is the abstractness test. Unfortunately, the very problem before the
court is that the abstractness test is not clear enough; indeed, the prior test
used in State Street and the ones presently proposed are (IMO: failed) attempts
to clarify it.
Rader further asserts:
section 101 as it is written will not permit a flurry of frivolous and useless
inventions. Even beyond the exclusion for abstractness, the final clause of
section 101 — "subject to the conditions and requirements of this title"
— ensures that a claimed invention must still satisfy the "conditions and
requirements" set forth in the remainder title 35. Id. These statutory
conditions and requirements better serve the function of screening out
unpatentable inventions than some vague "transformation" or "proper machine
with which I cannot agree. The further
requirements relate to obviousness and novelty: these do not at all serve the
function of screening for categoric eligibility, which is the business of
obviousness test, or its surrogates. However, here he begins to lead in to the
clue to why it is so hard to delineate eligibility.
in context, section 101 gives further reasons for interpretation without
innovation. Specifically, section 101 itself distinguishes patent eligibility
from the conditions of patentability — providing generously for patent
eligibility, but noting that patentability requires substantially more. The
language sweeps in "any new and useful process … [and]
… and, crucially, the
courts to date have read this as separating the criterion for eligibility from
the further requirements. I contend that this is why it is so hard to pin down
the abstraction test.
As long as the test for eligibility is separate
from the enquiries into novelty and obviousness, a claimed invention can
effectively cover (novel and non-obvious) subject matter which is abstract. The
claim's drafter packages the abstract thing with something non-novel, such as a
general purpose computer, so as to make it pass eligibility muster by being a
machine. The part of the package that has some semblance of eligibility fails
the novelty test and the part that's novel and non-obvious would fail the
eligibility test on its own; but separating the tests lets it sneak past.
What is needed is a test of the whole package, in which the examiner
identifies what, in the claim, is taught by, or obvious from, the prior art and
what is abstract or a law of nature; then, considering the remainder (in the
context of the whole), asks what it adds to the state of the art. If it adds a
"new and useful process, machine, manufacture, or composition of matter" to
relevant art, or improves some such in a new and useful way, then it is
eligible. Otherwise, not.
Note that the remainder may consist only of
the act of combining excluded parts, or their actions, in a particular way. If
that act results in a suitable useful thing or improvement, the claim is
eligible subject matter.
Newman tells us (and I suppose "the Court"
she mentions is the Supreme Court):
In Diamond v. Diehr, 450
U.S. 175 (1981) the Court explained that Section 101 is not an independent
condition of patentability, but a general statement of subject matter
eligibility. The Court stated:
Section 101, however, is a
general statement of the type of subject matter that is eligible for patent
protection "subject to the conditions and requirements of this title." Specific
conditions for patentability follow and §102 covers in detail the conditions
relating to novelty. The question therefore of whether a particular invention is
novel is "wholly apart from whether the invention falls in a category of
statutory subject matter."
and my proposed
test falls foul of any such "wholly apart from" constraint. However, the actual
wording of the section in question:
35 U.S.C §101 Whoever
invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may obtain a
patent therefor, subject to the conditions and requirements of this title.
plainly, on its face, expresses the enquiry into novelty in
the same phrases as enquiry into usefulness and subject matter. I thus think
the statute need not be read to separate these enquiries: and I contend that the
proposal above, by combining them, resolves the thorny issues that plague the
patent landscape at present.
(Note that the approach I give has a
similar structure to the filtration-and-something enquiry used in
copyright cases: that which copyright does not cover is left out of
consideration; the allegedly infringing and copyrighted works are only then
compared for "substantial similarity".)
Finally – the SCO
group saga's end game.
Break out the pop-corn, sit back and watch the fire-works.
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