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process and an abstract idea. BPAI indicated its conclusion would be no different even if Bilski altered his claims to mention use of some technology, such as a telephone or computer, to carry out the method because the method was essentially still an abstract one akin to the claim in Benson for implementing the algorithm in a programmed computer.

What Will happen?

The Federal Circuit has the opportunity in Bilski to clarify the standard by which to judge what processes are eligible for patent protection and why this is the right standard. It also has the opportunity to give substance to the abstract idea exclusion from patent protection.

If the Federal Circuit affirms the BPAI rejection of Bilski’s application and rules that Bilski’s method is unpatentable as an abstract idea and/ or as a non-technological process, the Supreme Court will probably be satisfied that the Federal Circuit has gotten the message that it should pay closer attention to the Court’s prior rulings and narrow the scope of patentable subject matter.

If, however, the Federal Circuit reverses the BPAI’s ruling in Bilski or is deeply split and issues multiple opinions expressing divergent theories about patentable subject matter, the Supreme Court will probably review the Bilski case to clarify what standards the PTO and Federal Circuit should apply in judging which processes are eligible for patent protection.

A decision upholding the unpatent-ability of Bilski’s process will not do away with all software patents because some do claim technological processes, but many patents issued under the State Street Bank test, whether for software innovations, business methods, dating methods, and the like, would then be rendered ineffectual. As things go, this would be progress. This is another patent reform that can and should be carried out through the courts.

 

Pamela Samuelson ( pam@law.berkeley.edu) is the Richard M. Sherman Distinguished Professor of Law and Information at the University of California, Berkeley.