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[ababab]

The Supreme Court has granted certiorari in the Bilski case.

Thoughts?

Predictions?

Prosecution strategies for now?

[JustAnotherExaminer]

The Supreme Court has granted certiorari in the Bilski case.

Thoughts?

Predictions?

Prosecution strategies for now?

Most examiners should be 101'ing every method claim "just in case".  That way we're not stuck doing a 2nd non-final with the sole purpose of inserting a 101 rejection based on new precedent. And we can always withdraw the old if the precedent is struck down.

[ababab]

Most examiners should be 101'ing every method claim "just in case".  That way we're not stuck doing a 2nd non-final with the sole purpose of inserting a 101 rejection based on new precedent. And we can always withdraw the old if the precedent is struck down.

Great.

Any suggestions for those on the other side of the table?

[Robert K S]

Most examiners should be 101'ing every method claim "just in case".

I don't mind an examiner trying to be helpful, but I do mind an examiner introducing all-new reference art on a 2nd-and-final , and using the amendments introduced to overcome Bilski rejections as the excuse needed to make the action final.  It's just improper.

[JimIvey]

Most examiners should be 101'ing every method claim "just in case".  That way we're not stuck doing a 2nd non-final with the sole purpose of inserting a 101 rejection based on new precedent. And we can always withdraw the old if the precedent is struck down.

Seriously?!?!?!  You see that "process" is right there in Section 101, right?  Bilski, although wrongly decided, is written pretty clearly and lays out a pretty simple rule.  Does the method claim require a machine?  Does the method claim transform matter?  "Yes" to either and move on to Sections 102, 103, and 112.  That's it, nice and simple.  Why not just do that?

What you're suggesting is more or less equivalent to the following reasoning:  "Bilski has introduced some uncertainty in Section 101 analysis.  Rather than trying to comply with the law and perform that analysis, I should always reject to just avoid the possibility of getting it wrong."  I have to believe that examiners are smarter than that.  And, since Bilski ruled that some method claims can comply with Section 101, you're certain to get it wrong if you reject all method claims.

This is precisely the sort of non-sense that is extremely frustrating with the current USPTO.  When in doubt, throw it out.  And, they're always in doubt.  And every new decision by the BPAI, the Federal Circuit, and the Supreme Court introduces new doubt, throwing more out.

Regards.

[Robert K S]

When in doubt, throw it out.

That's the supreme importance of the language "A person shall be entitled to a patent unless..."

I understand only like 60-75 cases appealed from BPAI go before the CAFC each year.

[patentsusa]

IEEE has signed on to a brief that takes a fairly sensible position. The brief agrees with Judge Dyk's concurrence.

Judge Dyk’s concurrence provided a discussion of how the test was understood at the time of the Patent Act of 1793, on which the current statutory language is based. Judge Dyk noted that “methods of organizing human activities” were never considered patentable at the time the patent statutes were written, even though they clearly existed at that time.

According to the concurrence, the test should be:  A process is patentable subject matter when it involves making or using a machine, manufacture, or composition of matter. 

[Wiscagent]

Robert K S noted

... the supreme importance of the language "A person shall be entitled to a patent unless..."

And patentsusa reminded us that

Judge Dyk’s concurrence provided a discussion of how the test was understood at the time of the Patent Act of 1793, on which the current statutory language is based. Judge Dyk noted that “methods of organizing human activities” were never considered patentable at the time the patent statutes were written, even though they clearly existed at that time.

I'm not a judge or even an attorney, but my opinion is that the black letter law shall be entitled to a patent unless ... should trump tradition.

In other areas of the law, such as taxes, clever attorneys are always figuring out ways to skirt the letter of the law by "inventing" new investment schemes.  And Congress, using its wisdom and considering the impact on their campaign contributions, may choose to outlaw such investment schemes.  But unless and until the law becomes effective, the activity is not illegal.

By analogy, patent law plainly states that a person shall be entitled to a patent unless and then provides a list of "unlesses".  Congress can take the reasoning of Judge Dyk's opinion and incorporate that into law.  But until "a method of organizing human activities" is listed as one of the "unlesses", or proscribed as not being an invention or a discovery, such methods should be patentable.

I'm not going to submit this note to the Supremes as an amicus curić; I'm guessing that Justice Roberts and his band of eight will have the benefit of more scholarly analyses.

[JSonnabend]

Yes, Richard, we could entirely ignore section 101 of the patent statutes, or we could figure out what a "process, machine, manufacture, or composition of matter" is.  Until a purported invention is properly determined to be one of the four items enumerated in section 101, section 102 doesn't even come into play.

- Jeff

[JimIvey]

In response to Jeff's note, I'd suggest that “methods of organizing human activities” is a process, explicitly enumerated in Section 101.

In terms of excluding financial instruments and/or processes under Section 101, I repeat that billions (with a "B" -- perhaps over a trillion, with a "TR") of dollars have been spent fixing a mess in which consumer debts have been combined and commoditized and valuation of those commodities was difficult.  Should we reward someone for coming up with a particularly clever and non-obvious way to evaluate such commodities in a way that reduces the complexity of investing to that found in other commodities such as corn and oil?  Is it the sort of innovation that ought to be encouraged by eligibility for patent protection if the process is novel and non-obvious?

I think the answer is a resounding "Heck yes!!"

If the rationale for excluding any particular subject matter is based on the assumption that the entirety of the subject matter is non-obvious, that rationale ought to be rejected outright.  Non-obviousness should be addressed by Section 103, not Section 101.

Regards.

[JSonnabend]

In response to Jeff's note, I'd suggest that “methods of organizing human activities” is a process, explicitly enumerated in Section 101.

Well, that's nothing more than a perfunctory (and merely conclusory) stab at statutory construction.  Words of statutes mean what they mean as used in the statute, and that's a determination that can't simply be answered by "I think x falls within y".

The rest of your analysis is besides the point.  Until we understand the metes and bounds of the subject matter delineated in section 101 -- until we construe what the words mean in context -- there is no reason to discuss what we "ought" to do.  If, properly construed, the statute doesn't do what it "ought" to do, it can be changed through legislation.

- Jeff

[JimIvey]

While asserting that “methods of organizing human activities” is a process, I didn't mean to suggest that it would not fall under a judicially created exception.  I was responding to "Until a purported invention is properly determined to be one of the four items enumerated in section 101...."  I believe that "methods" of any kind are "processes" and I believe the law acknowledges that the words are synonymous in the context of patents.

How a statute "ought" to be interpreted is very much a part of the law and, moreso than anywhere else, a component of the decision making process of the Supreme Court.  And, if legislation is the only real fix, where did all the judicially created exceptions to four enumerated types of eligible subject matter for patents in Section 101 come from?  Hint:  "judicially created exceptions."  I respectfully submit that, if a court can create exceptions to statutory subject matter under Section 101, the same court and modify and eliminate those same exceptions.

Regards.

[MYK]

Any bets on when they'll issue their opinion?

[Isaac]

Any bets on when they'll issue their opinion?

Opinions are being issued this month for cases argued in October, so my guess is that we'll get a Bilski opinion in April.