Monday 5 July 2010

Basic Bilski: answering the client queries

Now that the US Supreme Court has handed down its Opinion in the notorious Bilski case, the only thing our clients want to know is does this mean they can get software and or business method patents in the USA. Many Europeans have been sending clients to the US when they have to disappoint them that their ideas are not patentable in Europe. My conclusion is that if you could still get a business method patent it would be as much use as the collection of rubbish in my picture. As to a software patents, they seem to be much where they were before. 

Indeed the Supreme Court seems to be saying let nothing change. The only exceptions to patent eligibility remain "laws of nature, physical phenomena and abstract ideas".  That come from previous Supreme Court cases. The concept of hedging which was Bilski's alleged invention was deemed abstract and not patent-eligible. The main point of the Opinion is that the machine and transformation test is not the exclusive test for whether a process is patentable. It just provides a clue to the answer. Again this was also part of existing Supreme Court case law.

Bilski seems to have been much delayed because of a difference of opinion between two groups of judges. The Opinion of the Court was given by Justice Kennedy. He held that a business method had to be a process within the scope of the Patent statue because of a defence introduced in 1999 following the State Street case that opened the floodgates for non-technical patents in the USA:  Kennedy says:
Under 35 U. S. C. §273(b)(1), if a patent-holder claims infringement based on“a method in [a] patent,” the alleged infringer can assert a defense of prior use. For purposes of this defense alone, “method” is defined as “a method of doing or conducting business.” §273(a)(3). In other words, by allowing this defense the statute itself acknowledges that there may be business method patents.
Justice Stevens strongly disagreed and said that Section 273 is a red herring. He clearly wanted the Court to give a clear statement that methods of doing business are not patentable "processes".

There is some great material in the Stevens Opinion about the underlying policy of the Patent system. It is quite gratifying to see the recognition of the English influence.

Overall if you are a business man, please do not take your business ideas to the patent attorney, use them. Your investors may think you ought to patent them, if the competition is doing so. I suggest you tell them that means your competitors are not focusing on their job. The fear of  course is the troll with a patent. Justice Stevens offered this crumb of comfort:
... Members of this Court have noted that patents on business methods are of “suspect validity.” eBay Inc. v. MercExchange, L. L. C., 547 U. S. 388, 397 (2006) (KENNEDY, J., concurring).

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