Legal Commentary

Thanks for the welcome, Dan, and thanks to Prawfsblawg for having me back.  I have a variety of areas I want to post about this month.

But first, it is good timing that I am guesting this month, as the Supreme Court just granted cert. in In re Bilski (now Bilski v. Doll) (H/T several people).  If you haven't heard of it, Bilski is about patentable subject matter - more specifically about intangible processes.  The Federal Circuit's en banc opinion in Bilski issued while I was guesting last October - hence the good timing.

I posted at length about patentable subject matter last time, and the article I discussed has since been published by the Tennessee Law Review.  I don't plan to repeat myself this time, but I wanted to comment on what the granting of cert. might mean.

I was extremely critical of the Federal Circuit opinion when it came out, and not just because of sour grapes that the amicus brief I wrote with three other professors was largely ignored (and worse yet, uncited!).  I predicited in my prior posts that the new test would be a disaster, and - to my mind - it has been.  Bilski's machine or transformation test (see here for a description) has led to rejections of a variety of patents that were otherwise seemingly inventive, and that were completely unrelated to the much maligned business methods of Bilski.  Worse (and a focus of my article), the opinion leaves the test so vague that no one can really know if they have patentable subject matter until after a long process.

So I should be thrilled that cert. has been granted, right?  Time will tell.  I didn't participate in any amicii supporting the petition because I'm not really sure I want the Court to rule on this case..  The problem is that the Bilski application is very, very weak in my view (it is for hedging certain types of commodities).  It is weak for a variety of reasons, and probably should never issue.  Thus, I worry that the Court will mix the subject matter issues with the other problems with the application.

Then again, this is the perfect case to test the Court's fortitude for deciding the question presented.  There has been no ruling below on the other merits of Bilski because the PTO wanted it that way - the examiner (as far as I know), BPAI, and Federal Circuit ruled on subject matter and only subject matter.  If the Court reverses here, the application will likely be remanded all the way back to the examiner to consider novely, obviousness, enablement, and other patentability issues.

Thus, I am hopeful the Court will let the system work by rejecting a terrible test, coming up with a better one (the one I propose wouldn't be so bad, methinks), and letting the PTO deal with Bilski on the merits. I said the same thing in an Op-Ed to no avail before the Federal Circuit ruled.  We'll see if things change this time around.