Academic Perspectives on Issues Raised in the Bilski Case

On June 1st the Supreme Court of the United States granted a petition to hear the case of Bilski v. Doll. At the Court of Appeals for the Federal Circuit, the Bilski patent for a method of hedging risk in commodities trading was rejected, affirming the decision of the USPTO. The majority of the court moved away from the concrete-and-tangible-results test and towards a machine-or-transformation test in considering whether claims for an invention fall within patentable subject matter. Since at this point the issues related to patentable subject matter will likely be primarily addressed with policy considerations, it might be interesting to focus on the beliefs raised by academics in this area of law. In particular, two amicus briefs filed for the Federal Circuit decision last year represented the opposing views of two groups of U.S. professors and will be looked at.

In a brief of ten law professors supporting the USPTO decision, it was argued that recognizing the Bilski patent as eligible would be potentially unconstitutional for one or more of the reasons of not promoting progress, not falling within the useful arts (meaning not being technological in nature), and not being the discovery of an inventor. They suggest the application of the Diehr-Flook standard (based on two past Supreme Court decisions), which protects the public domain of science, nature, and ideas whose uses should not be encroached. According to this standard, an invention needs some other inventive concept beyond the mere application of public domain information in order to prevent the patent system from “either extending to scientific principles or creating odious monopolies”; simply restricting such an invention to a particular use is not enough. Additionally, according to the Diehr-Flook standard, claims must either transform matter significantly or use a machine, article, or composition for significant post-solution activity, and the concrete-and-tangible-results test should be avoided as it is potentially unconstitutional. A major underlying belief in support of categorical exclusions of certain public domain subject matter, which may exist beforehand despite being undiscovered, is a “social obligation to preserve free from private ownership and disseminate pre-existing basic information”, which the professors argue also fulfills the Constitutional goal of promoting progress by not limiting use by others.

Another brief of twenty two law and business professors disagreed with the USPTO decision, arguing for an expansive interpretation of the patentable subject matter definitions so as to cover “anything under the sun made by human endeavor”. They believe that there should not be any arbitrary limits on the scope of patent protection since courts in the past have tried to differentiate between software that involved physical transformations and those that did not, but this distinction became unworkable and resulted in absurd situations where a patent application covering the same invention could be rejected or accepted based on whether it was drafted with “magic words”. Furthermore, it was argued that the exclusion of inventions based on discoveries of natural phenomena and mental steps is contrary to the patent system’s goal of promoting progress. For example, pharmaceuticals and biotechnology often do not have a novel and non-obvious physical aspect as their inventive concept; rather the discovery of the new use is what is actually important. These types of arbitrary distinctions, it was said, will only reduce incentives to produce valuable inventions, so it is better to have a broad conception of patentable subject matter instead of a strict one in order for the patent system to be flexible enough to evolve with new technology. To borrow terminology popularized in another context, instead of using the axe of subject matter restrictions, the system would be better served with a scalpel to bar bad patents on other grounds, such as not being novel, being obvious, not having practical utility, or not being drafted with definite claims.

Though the professors in the second amicus brief present good arguments, my own views are more naturally in line with the first brief. My inclination is that the notion of private property is much more ingrained into the culture south of the border, perhaps stemming from the fact that property rights are protected in the U.S. Constitution but not in our Charter. I simply prefer a patent system that does not allow for protecting everything under the sun, as I believe in the idea that certain subject matter should remain as part of a commons, and determining “bad” patents (at least in terms of policy) on an individual basis could lead to even more arbitrary distinctions. Regarding arguments about the unfeasibility of delineating physical transformations that are not peripheral, inconsistent decisions could be lessened with more precise manuals for examiners. Patent agents will always use language to their advantage when trying to push their clients’ applications through, as that is simply a part of the advocacy process. Making distinctions on the basis of the nature of the physical aspect of an invention is analogous to the determination in contract law of whether an act of exertion or detriment counts as consideration for an enforceable agreement or whether it is simply a mere condition of benefiting from a gratuitous promise; such distinctions are workable. On another note, I am admittedly not one with sufficient understanding of the various economic ramifications of deciding to go with the overall approach of one brief over the other.

There were two other amici curiae who are professors as well, and each submitted a separate brief on their own behalf. For links to all of the briefs for the Federal Circuit decision, see the Patently-O blog here.