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Robert J. Sayre
Robert J. Sayre
Cambridge, MA,
United States

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Still waiting - 10 expectations for Bilski and patent eligibility


by Robert J. Sayre

Sorry for my long absence from this blog. This past month was the busiest that Modern Times Legal has seen since opening shop almost three years ago; and the practice has been non-stop busy since at least December of last year, so count my experience as one small data point for increasing economic recovery. Nevertheless, I will try hard to accelerate my posting, as I still have dozens of ideas for what I think will be interesting posts.

My last post cited rumors that the Supreme Court's decision in the Bilski case was imminent. As the decision still has not issued, those rumors were false. Nevertheless, what can we derive from this remarkably long wait for the Supreme Court's decision?

  1. The Supreme Court Justices may be strongly divided as to the patent eligibility of business methods and, potentially, computer software.
  2. Nevertheles, the Supreme Court's decision will almost certainly issue within the next month, as the Court's current term wraps to a close.
  3. The Supreme Court very likely will not simply affirm the Federal Circuit's "machine or transformation" test, unless they have four votes to affirm and another justice finally wears down (this strikes me as unlikely). As more time passes, the likelihood that the Court's Bilski decision will shake up the standard increases. In recent patent cases, the Supreme Court has not been shy about reversing and scolding the Federal; and I do not expect that disposition to change here.
  4. Accepting that we will have a new standard, I pin the odds at only slightly more likely than not that the Supreme Court will broaden (or relax) the standard of patent eligibility, as opposed to closing the door even further on the patentability of business methods and software. 
  5. I expect that the Supreme Court is dissatisfied with the Federal Circuit's test but is having a very hard time generating an alternative test (that will satisfy five Justices); consequently, the likelihood of having a full majority opinion may be decreasing, which may result in a more limited decision that can secure the votes of five Justices.
  6. The Supreme Court Justices are a smart group, and they have very smart clerks; so I am optimistic that the expected new standard will be well reasoned, though it may well be controversial.
  7. What the Court lacks, though, is practical experience with patents as well as extensive expertise in science and engineering; so the risk is that they may not appreciate all of the real-world nuances and ramifications, and they may have a hard time appreciating that there is no clear distinction between tangible and intangible ideas (ideas when put to practical use always have some physical manifestation, whether in computer memory or in the human brain); so facile determinations based on concepts of "tangibility," though superficially attractive, are ultimately likely to be highly arbitrary and artificial.
  8. What I expect the Court will find and appreciate, however, is that even if one takes a static view toward the standards patent eligibility over time, largely abstract processes have long been patentable, as evidenced by Samuel Morse's patent for Morse Code issued more than a century and a half ago, a point the majority of the Federal Circuit appeared to conveniently ignore.
  9. The Court will appreciate the increasing importance of software and other more-abstract concepts to the American economy, and they will appreciate the risks and dangers of disrupting existing expectations too much; so I think it unlikely that most software, for example, will be barred from patent eligibility.
  10. Finally, to the extent that a safe harbor can be counted on, the integral tie-in of actors, elements and/or phenomena outside of a computer and outside the human mind are likely to be the safest bet in terms of providing solid footing for patent eligibility.
My advice to clients with pending business-method and software-related applications has mostly been to wait for the decision before responding to outstanding Office Actions where feasible and, for those who are planning to file, to just file a provisional application now and wait for the Bilski decision before filing the non-provisional, though these decisions always hinge upon a host of considerations based on the client's particular circumstances.

I will certainly provide my thoughts when the decision issues. Subscribe to the RSS or email feed for this blog to receive notice when that post goes up.


Good news about your "one small data point for increasing economic recovery". Every data point counts. 
I agree with your comments particularly with the Supreme Court likely finding it difficult to come up with an alt test. I think they will hold "machine or transformation" cannot be the only test and are likely struggling with an alternate test. My guess is that five will agree to "relating to or involving technology" as an umbrella test to exclude "mental step" inventions, but include software related, therapeutic and other technology related innovations.  
I think they also might have now realized that most if not all of the concerns they raised during the hearing are addressed by novelty/nonobviousness. With the obviousness standard already modified by KSR, this filter is much more effective at blocking the types of patents many find objectionable as being "common sense".
Posted @ Saturday, May 29, 2010 10:02 PM by jb
"The Supreme Court Justices are a smart group, and they have very smart clerks; so I am optimistic that the expected new standard will be well reasoned, though it may well be controversial." 
They may be smart, but they sure seem to be confused about the issues in this case. 
Their questions sure made it appear that they didn't understand the difference between obviousness (35 USC 103) and the categories of patent eligible subject matter (35 USC 101). 
In some instances, they didn't even seem to be aware of the difference between fantasy and reality (Justice Scalia's question about horse whispering for example). 
There are no patents to applying the Jedi mind trick to horses, because that is fantasy, not reality.
Posted @ Sunday, May 30, 2010 8:41 AM by Les
Thanks for the good comments. I endorse the comments made by both JB and Les regarding section 103 (obviousness). If a patent seems ridiculous, usually the most sensible ground for attack is to establish that the invention is obvious in view of prior art and, therefore, unpatentable under 35 USC 103. 
The Justices may make misguided or naive comments in oral argument where they may not have spent too much time in preparation, though I expect them to get a better grasp on the issues when they later parse them in chambers as the opinion(s) is/are being drafted. I hope I am not too optimistic on that point.
Posted @ Wednesday, June 02, 2010 1:48 PM by Bob Sayre
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