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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.
