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Court will rule in Bilski that business methods are unpatentable. The Court typically finds historical evidence and decades of precedents persuasive. Both of these factors cut against the patentability of business methods.
The structure and purpose of the patent act also suggest that patents should only protect technological processes. Section 101 allows patents to issue for “new and useful machines, manufactures, compositions of matter, and processes.” The constitutional purpose underlying this provision is “to promote the progress of…useful Arts,” which in today’s parlance is understood to mean the technological arts. The Court will probably also discuss some policy reasons for limiting patents to technologies.
The Court will probably be unanimous in striking down business method patents. Although the opinion written by one of the Justices for the Court will likely focus only on the unpatent-ability of business methods, there may well be at least one concurring opinion that takes a stronger and broader stance against nontechnological patents.
It is highly unlikely that the Court will endorse the State Street standard in part because it requires reading four words into the statute that aren’t there (the “useful, concrete, and tangible result” part of the test). This test is, moreover, normatively unappealing and has caused the PTO to waste resources examining nontechnological claims.
Nor is the Court likely to endorse the CAFC’s “ machine-or-transformation” test because that test seems to conflict with the Court’s 1972 decision in Gottschalk v. Benson. Benson sought a patent for a novel method of
transforming binary coded decimals to pure binary form. One claim contemplated carrying out this method in a programmed computer; another claim omitted references to computer technology. The Court ruled that this algorithm was ineligible for patent protection because it was an abstract mathematical idea. The Court did not distinguish between the claim that mentioned re-entrant shift registers and the one that didn’t.
Unless the Court is ready to overturn Benson, it may say that Bilski’s business method should not become patentable if Bilski simply mentions that the method could be carried out with the aid of a programmed computer or that when embedded in software, the method would transform data.
In explaining why Bilski’s method is unpatentable, the Court will almost certainly have to construe Benson and Diehr. Thus, its Bilski decision will almost inevitably reopen a host of questions about the patentability of software innovations.
Software innovations have been troublesome for patent law in part because they often, like Benson’s algorithm, are mathematical ideas that can be carried out in a human mind or with the aid of a pen and paper, as well as by computer, and in part because they often automate business processes, which the Court is likely to rule are unpatentable.
Because the code that actually implements innovative software processes is protected by copyright law, some confusion exists about the respective roles of copyright and patent in protecting computer program innovations.
Although the Court may find it easy to reject Bilski’s patent as nontechnological, it is a difficult task to develop a definitive test for judging which processes are and are not “technological.” Are Web services or XML schemas, for example, technological processes?
Bilski will not definitely answer these questions, but it will give new life to this decades-old debate.
Pamela Samuelson ( pam@law.berkeley.edu) is the richard M. Sherman Distinguished Professor of Law and information at the University of California, berkeley.
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