ILNews

Navigating the patent process

Back to TopE-mailPrintBookmark and Share
Indiana Lawyer Focus

Attorneys in the intellectual property arena waited for “the case” to come down during the past year, but what they got June 28 was anything but the landmark decision so many lawyers expected.

Rather than an expansive or limiting holding about what a patentable “process” is, the Supreme Court of the United States issued a ruling that didn’t change much for IP attorneys throughout the country. With its decision in Bilski v. Kappos, No. 08-964, the court chose not to weigh in on much-debated issues affecting software patents and instead maintained the status quo.

Justices unanimously agreed with the result reached by the Federal Circuit Court of Appeals in affirming a lower court decision that rejected a patent for a type of business process that was at issue in this case.

Specifically, this case involved the founders of a Pittsburgh company that sells customized consumer energy products. The company requested a patent for how they hedged energy trade. But their request to patent this business “process” was repeatedly rejected because it was considered an abstract idea, not eligible for patent protection under §101 of the Patent Act.

With its en banc ruling in October 2008, the Federal Circuit held that a process for predicting and hedging risk in commodities markets did not deserve a patent because it was not tied to a machine and did not result in a physical transformation. In affirming the patent claims rejection, the federal appellate court also applied the “machine-or-transformation test” that had been in place for more than a century before 1998.

Leading up to the decision, IP attorneys, businesses, and inventors worried that the court could have upheld the ruling in a broad way that would have invalidated hundreds of software business patents already secured; or that it would have restricted or shifted the standard for how those types of patents are obtained in the future. The case could have had significant impact for Indiana, where pharmaceutical, life sciences, and bio-fuel industries have a large stake in securing patents for their devices and services – such as the impact on a company using a particular software program to analyze an X-ray image, or the makeup of a particular medicine.

But justices decided it wasn’t necessary to make broad sweeping decisions about patents to dispose of the case. They instead relied on existing precedent to make its decision and decided not to further define what constitutes a patentable process.

“With ever more people trying to innovate and thus seeking patent protections for their inventions, the patent law faces a great challenge in striking the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles,” Justice Anthony Kennedy wrote. “Nothing in this opinion should be read to take a position on where that balance ought to be struck.”

The court largely relied on its landmark trilogy of patent cases that shaped what is eligible to receive a patent – Gottschalk v. Benson, 409 U.S. 63 (1972), Parker v. Flook, 437 U.S. 584 (1978), and Diamond v. Diehr, 450 U.S. 175 (1981).

“Today, the Court once again declines to impose limitations on the Patent Act that are inconsistent with the Act’s text,” Justice Kennedy wrote, referring to past precedent as the “guideposts” in this area.

Even though the justices agreed in result, they were divided 5-4 in their reasoning, and the majority’s view was that there needed to be a flexible test for emerging technologies. The main opinion is 16 pages, while the other justices penned two concurring opinions – one 47 pages and the other four pages – that delved into their views.

Justice Kennedy wrote that the court was not endorsing that idea of the “machine-or-transformation” test.

“There are reasons to doubt whether the test should be the sole criterion for determining the patentability of inventions in the Information Age,” he wrote. “In the course of applying the machine-or-transformation test to emerging technologies, courts may pose questions of such intricacy and refinement that they risk obscuring the larger object of securing patents for valuable inventions without transgressing the public domain.”

But in the 47-page concurring opinion joined by three of his colleagues, Justice John Paul Stevens – in one of his final actions on the court before his retirement – disagreed with the majority’s approach to a “process” as applied today.

“Although this is a fine approach to statutory interpretation in general, it is a deeply flawed approach to a statute that relies on complex terms of art developed against a particular historical background,” he wrote. “Indeed, the approach would render §101 almost comical. A process for training a dog, a series of dance steps, a method of shooting a basketball, maybe even words, stories, or songs if framed as the steps of typing letters or uttering sounds – all would be patent eligible. I am confident that the term ‘process’ in §101 is not nearly so capacious.”

Still, he wrote about the importance of keeping patent law stable and clear, and relying on precedent in restoring patent law to its historical and constitutional moorings. He analyzed the patent law history dating to England, the foundations of American patent law, and how it’s developed through the centuries to this point.

Overall, he wrote that “the scope of patentable subject matter ... is broad. But it is not endless.”•

ADVERTISEMENT

Sponsored by

facebook - twitter on Facebook & Twitter

Indiana State Bar Association

Indianapolis Bar Association

Evansville Bar Association

Allen County Bar Association

Indiana Lawyer on Facebook

facebook
ADVERTISEMENT
Subscribe to Indiana Lawyer
  1. Two cops shot execution style in NYC. Was it first amendment protest, or was it incitement to lawlessness? Some are keeping track of the body bags: http://www.breitbart.com/big-government/2014/12/13/al-sharpton-leads-thousands-in-saturday-march-on-washington-dc/

  2. From the MCBA: “This situation is not just about the death of Michael Brown, but the thousands of other African-Americans who are disproportionately targeted and killed by police officers.” The association said it was “saddened and disappointed” by the decision not to indict Ferguson police officer. HOPING that the MCBA will denouce the execution style killig of two NYC police officers this day, seemingly the act of one who likewise believes that the police are targeting blacks for murder and getting away with it. http://www.mediaite.com/online/two-nypd-cops-fatally-shot-in-ambush-in-brooklyn/ Pray this violence soon ends, and pray it stays far away from Indiana.

  3. "Am I bugging you? I don't mean to bug ya." If what I wrote below is too much social philosophy for Indiana attorneys, just take ten this vacay to watch The Lego Movie with kiddies and sing along where appropriate: https://www.youtube.com/watch?v=etzMjoH0rJw

  4. I've got some free speech to share here about who is at work via the cat's paw of the ACLU stamping out Christian observances.... 2 Thessalonians chap 2: "And we also thank God continually because, when you received the word of God, which you heard from us, you accepted it not as a human word, but as it actually is, the word of God, which is indeed at work in you who believe. For you, brothers and sisters, became imitators of God’s churches in Judea, which are in Christ Jesus: You suffered from your own people the same things those churches suffered from the Jews who killed the Lord Jesus and the prophets and also drove us out. They displease God and are hostile to everyone in their effort to keep us from speaking to the Gentiles so that they may be saved. In this way they always heap up their sins to the limit. The wrath of God has come upon them at last."

  5. Did someone not tell people who have access to the Chevy Volts that it has a gas engine and will run just like a normal car? The batteries give the Volt approximately a 40 mile range, but after that the gas engine will propel the vehicle either directly through the transmission like any other car, or gas engine recharges the batteries depending on the conditions.

ADVERTISEMENT