Guests: Prof. Tom Cotter of the University of Minnesota Law School; Prof. Carl Moy of William Mitchell College of Law
When is a method of doing something patentable? Specifically, assuming a process is new, useful and non-obvious, what substantive test controls whether the patent law should protect a given process under 35 U.S.C. §101? Courts have struggled to formulate an all purpose test – one that would accommodate the range of technical innovation. Perhaps the inquiry was simpler in times when basic mechanical, electrical and chemical engineering questions were being resolved (such as the vulcanization of rubber – see Goodyear’s method patent #3633). There are few, if any, philosophical disputes that the patent system was intended to, and does, cover such inventive processes. The U.S. economy move from a manufacturing base to an information base posed new challenges. Would the system evolve to protect new information and business method innovations - such as a tax refund system?? Sometimes, yes – see H & R Block’s U.S. Pat. No. 7,177,829.
In determining whether a given process is patentable, courts have applied various tests, including: (a) “useful, concrete and tangible result” test of State Street Bank (Fed. Cir.’s original effort to resolve business method problem child); (b) Freeman-Walter-Abele test (CCPA jurisprudence); (c) machine-or-transformation (S. Ct. in Benson); and (d) technological arts test (proposed by some Bilski amici). In its en banc Bilski decision, the Federal Circuit has now provided its official position on the matter: the Benson machine-or-transformation test governs exclusively and all the other tests are thrown under the bus (Prof. Moy’s phraseology – see below). While the Court was careful to state that there are no bright-line exclusions of business method and software subject matter, the Court also noted that these arts must meet the machine-or-transformation test. Most agree that business method patent practice will be a little trickier going forward (perhaps the Court’s intent?).
So now what? Of all the tests, why this one? Further, why use the cleaver of §101 to tighten patent eligibility when the scalpels of §§102, 103 and 112 do just fine? Is this the death of business method and software patents (as some have suggested)? Have we now in fact closed the debate on the patentability of business methods!?! (slight chuckle). Or will it all be resolved with careful claim drafting?
To help part the waters and clear the clouds on this evolving law, we turned to the academy - Prof. Tom Cotter of the University of Minnesota and Prof. Carl Moy of William Mitchell College of Law (each with some pointedly distinct views). We do a quick-fire dissection of the decision, take a quick romp of significant caselaw back to 1850 (when Goodyear was working on rubber), and ponder impact going forward. Joining us as well for a bit of pontification are a few colleagues with particular interest in Bilski (Denise Kettelberger; Rob Kalinsky; Ben Tramm; Al Vredeveld; Eric Chad). Stay tuned for more developments (review by the Supremes?).
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