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in the heyday of the
internet bubble, many
patents on methods
of conducting business
on the internet.
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.
implications of Bilski for
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 ( email@example.com) is the
richard M. Sherman Distinguished Professor of Law and
information at the University of California, berkeley.