I am sure it will come as no great surprise to anyone who is a regular reader of IPWatchdog.com, but let me be as clear as I can be and put my bias right out in the open. I am a true believer in the patent system and I like the US approach to patentability, which is one where practically everything is patentable. There are, of course, some notable exceptions in the US. For example, you cannot patent something that is only capable of use for an illegal purpose, but if you get a rejection based on this it shows an acute lack of imagination. You don’t patent burglar tools, you patent locksmith tools! In any event, you also cannot patent an idea, laws of nature (such as E=mc², or the law of gravity), mathematical equations or things that are merely discovered. Pretty much anything else is fair game though, including software, business methods, living matter and pharmaceuticals. Given that patent watchers and software folks are becoming increasingly impatient waiting for a decision from the Supreme Court in Bilski, allow me to focus on software and business methods.
From a conceptual standpoint why not allow for software and business methods to be patented? What is the harm? Why should we ever be making this a determination about what can or should be considered patentable subject matter? For crying out loud patentable subject matter is but one of the patentability requirements! There is absolutely no need to attempt to wrap all of the patentability requirements into a single 101 inquiry just because the subject matter of the invention happens to relate to a business method or piece of software.
Unfortunately, those who oppose software patents frequently, if not always, want to turn the patentability requirements as they apply to software and business methods into a single step inquiry. They want it all to ride on patentable subject matter, which is a horrible mistake. The majority of the Federal Circuit got it completely wrong in Bilski, and other notable recent decisions. Patentable subject matter is a threshold inquiry and should not be used to weed out an entire class of innovation simply because bad patents could and will issue if the other patentability requirements are not adequately applied. That is taking the “easy” way out and is simply wrong.
The patentability inquiries under 101, both patentable subject matter and utility, have always been, and are even now, threshold inquiries. When deciding whether a certain category of invention is patentable subject matter that is not ipso facto deciding that the invention should be awarded a patent, yet the nay sayers who despise software and business methods cannot be troubled with the other patentability requirements and prefer to cut to the chase and simply say software and business methods should not be patentable — period. But that would render an entire class of innovation unpatentable even if the resulting innovation were new, non-obvious and described adequately so that others of relative skill and experience would be able to follow along with the patent and be able to understand and even replicate the invention.
In truth, there are a lot of objectionable software patents out there but they are objectionable because they are either not new (probably rare), they are obvious (far more common) and/or they simply are not described so others could replicate the invention (extremely common if you ask me). A patent is not supposed to be a blueprint, but it has to be more then merely suggestive, which is where so many software and business method patents fall down. So why then decide any of these cases based on patentable subject matter? Beats me. It is clearly the wrong part of the patent laws to be focusing on.
The questions presented by 101, both for patentable subject matter and for utility, are nothing more than the patent equivalent of asking whether you are tall enough to ride the ride. We have all seen these signs at amusement parks before — You MUST Be “This Tall” to ride this ride. If you are tall enough end of inquiry. You qualify to ride, but the fact that you qualify to ride doesn’t mean that you have any likelihood of getting to the front of the line to actually get on the ride before the park closes. It also doesn’t guarantee that you will not lose loose items such as glasses, wallets, change, jewelry and/or any other object that you elect to bring on the ride with you.
Conceptually why should software and/or business methods be treated any differently than any other invention? We do not require that an apparatus satisfy the novelty, nonobviousness and description requirements under 101 before a patent can issue. This is not happenstance either. There is a very good reason that we do not require an apparatus to satisfy novelty, nonobviousness and description under 101; and that good reason is because these are NOT inquiries that come up under 101! So why then should we collapse all of the patentability requirements into one requirement, a requirement never intended to do anything other than be a threshold inquiry?
During oral arguments at the Federal Circuit Judge Rader was keeping his eye on the ball. The question before the Federal Circuit related to patentable subject matter, not ultimate patentablity. Rader went so far as to suggest in a passing comment while Mr. Chen was arguing on behalf of the government that he has real doubts that the Bilski invention would ever satisfy either 112 or 102. Nevertheless, Rader kept wanting to know why the statute clearly allows for process inventions to be patentable if a process requires a machine to be patentable. This is indeed an excellent question, and one that several of the Judges were interested in exploring on that day. Of course, we know what happened in that case and the majority of the Federal Circuit got it wrong, although Judge Rader and Judge Newman did get it right.
Self proclaimed protectors of the integrity of software advocate for free and open source and no proprietary rights. Many of those in the financial sectors also advocate against business method patents. What a wonderful world it would be if real world investment, innovation and technical advancement would follow good ideas and processes whether they are or can be protected. That is not the world we live in though. There cannot be market opportunity without proprietary rights, and if the Supreme Court returns us to pre-State Street law and does away with the patenting of all business methods that will be bad for our economy, not to mention outright inconsistent with the well established law associated with patentable subject matter.
Bilski should not be about patentable subject matter, or if is decided on patentable subject matter the grounds for the decision should be extremely narrow and tailored to the facts of the case. If the Supreme Court wants to issue a decision saying the Bilski invention is not patentable subject matter the decision should be no more than a few pages. Set up the facts and procedural history and then issue a one line holding, namely that purely mental processes are not patentable. Observe, think, react should not be patentable, at least in my opinion. But even then the Supreme Court needs to be very careful because an overly broad decision making mental processes and the like unpatentable could impact diagnostic methods, which would be enormously negative. We desperately needs research and funding into diagnostics. Without diagnostics you cannot develop treatments, so diagnostic methods must always come before treatments. If we want to push the innovative envelope with ever more treatments and cures, we must have diagnostic treatments, so Supreme Court beware!
Who knows when we will have a decision in Bilski. It could be soon though. I have heard rumors that a decision will be out within a couple weeks, but in truth there is really no way to tell. I suspect that just means everyone is anxiously awaiting word, and if you ask me a decision cannot come soon enough. District courts are starting to do the responsible thing and stay litigation pending resolution by the Supreme Court. So there is great hope that a decision will actually be enlightening, rather than a non-decision that gives scant guidance and kicks it back down the ladder for further consideration. That would be the worst possible outcome. I sure hope that doesn’t happen.