"Clues" for Determining Unpatentablity

Pamela Samuelson, director of the Berkeley Center for Law & Technology and member of the IP Osgoode International Advisory Board, just co-authored an article, with Jason Schultz, on Bilski v. Kappos, 130 S. Ct. 3218 (2010). The article argues that the US Supreme Court clarified that generalized financial hedging techniques are abstract ideas ineligible for patent protection. Yet the Court is also said to have left the framework for determining abstraction (as opposed to concreteness) indistinct, offering nothing but “clues” for undertaking such analyses in future cases.

The authors explain: “In this article, we attempt to provide the beginnings of such a framework. We start by discussing the clues we think are most likely to be useful to the Patent Office and the courts in developing a jurisprudence of abstractness as a disqualification from patent protection. We then discuss why, in light of these clues and in line with sound patent policy, business and service method innovations, while not categorically unpatentable, should still generally be excluded from patent protection as abstract ideas. Finally, we provide further support for this approach by suggesting that taking the clues of unpatentability seriously may facilitate administrative and judicial efficiency in reviewing patent claims when assessing whether they satisfy patent subject matter rules”

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