This WEEK in LAW -- Bilski
On 06/28/10, the Supreme Court of the United States decided Bilski v. Kappos, a case about what subject matter (including software and business method patents) is eligible for patent protection under US law. Unfortunately, the Supremes blew it, says patent attorney Erik J. Heels.
To discuss the Supreme Court decision in Bilski, Denise Howell, hosting This Week in Law, brought together three well-known patent attorneys, who blog about intellectual property, J. Matthew Buchanan, Stephen M. Nipper, and Erik J. Heels. Listen in.
For our readers, we've included the following transcript of an excerpt of this episode of the This Week in Law that touches on areas of special interest to us.
Erik J. Heels
I think the issue, well, one of the issues, is that when you have any new technology whether it's hardware, software, biotechnology, or anything else, there isn't good findable prior art for the Patent Office to search on, because one of the things that the Patent Office is really, really good at is searching patent documents, issued patents and published applications. They're not good at searching elsewhere.
So, the trend of when a new technology comes out and a whole bunch of patents, arguably over-broad patents, are issued at the outset, is not one that's unique to software. It happens with every new technology. So, if the concern is about the quality of patents, I think there's a simple change in the patent law that the USPTO or Congress could make and that would simply be requiring every application to have a formal search done at the filing. Because right now the rule is you only have to disclose that which you know about, and that's what leads to a lot of poor patents, because you're allowed to say with a straight face, "Yeah, we invented double-clicking and, as far as we know, no one had even invented the mouse before."
Denise Howell
Right, so ignorance is bliss as far as patent applications are concerned.
Matt, is there any change on the horizon to that in the way of patent reform? There are constantly bills pending along those lines but they also seem to languish.
J. Matthew Buchanan
Yeah, I think Erik makes a good point. There are always patent reform bills pending it seems, and actually that's been proposed, putting a burden on applicants to submit some search data and things like that, but I think we could even accomplish something like that without amending the code, so to speak. I've long thought that the problem with the software patent issue is not carving it out of, carving software or business methods out of patent eligibility, making a specific exception either in the code or through case law. I've kinda always thought it should be addressed on the patentability aspect.
Like Erik said and like Steve said, software guys have always kinda said, oh well, this thing's patented but somebody was working on this twelve years ago and yeah that's not new. Like Erik said, the patent office didn't know that, because while the patent office does a great job searching patents and in recent years published patent applications they are not very well-equipped to search what we call non-patent literature, which is scientific journals and some other resources of prior art. And, they're starting to do a pretty good job in the life sciences and hard science areas, because there's a structure for that, there's all these journals out there and it's cataloged and all that, but in the software field it's just not something that's available to them and I think industry could kinda solve this problem for the office by building a comprehensive database or web app or whatever it is that everybody contributes to regularly and over time this thing will kinda become the go-to resource not only for patent examiners but for everybody to kinda look at and date things. So when somebody submits a new patent application on a one-click business method the patent examiner, of course, he'll first search for patents and he'll first search for published applications, and he won't find anything. But then he'll go to this resource, and if it's true that somebody was working on that in 1989, he'll find it and he'll reject the application because it's not new, it's not novel. So, we didn't have...
Denise Howell
Right, so you're envisioning some kind of "innovation databank" where whenever something novel comes along, like, say RSS, the history of it is documented and there could be debate about the origins and people involved etc. but at least you have some kind of record and some kind of collaborative, community moderated consensus as to what happened when.
Matt Buchanan
Yeah, that's exactly right. And you know to some extent the Internet at large is becoming that, but the Internet at large is inherently untrustworthy. So I think they would need to build a specific resource, you know, that adheres to certain principles and policies and procedures, and such. And there's actually precedents for this, the biotechnology industry has a tremendous resource where researchers submit new gene sequences that they discover and they put them in a database that anybody can access and patent examiners use it all the time. And we didn't carve those out of patentable subject matter. We typically rely on the patentability requirements when we're dealing with those types of inventions.
Denise Howell
Sounds like a great idea. Steve, have you ever seen something like this in the making? Or, what do you think the chances of it coming together are?
Stephen Nipper
Well, and I mean, that's always the problem with software -- that you start out, you know "software is not patentable" "software is not patentable" the only protection you're able to have is copyright, and secrecy. And so, throughout history, in having software you've got, you know, source code that's locked down, no one knows how you do those things, and relying on copyright And so all of that old information, all of that old knowledge isn't out there in a way that's searchable and, moving to that transition, that is the problem. I don't know what the easy solution for building that database is. The reality is that the Court has indicated that software is patentable, I mean that, that's the reality of it, you've got to deal with it. The two options you have is either to deal with patent reform and get Congress to change the law and carve out an exception, or you need to educate the patent office. I mean, those are the only two options.
I've seen cases where people have gone in and had set up, defensively, they had started to compile information in a particular area. You know, you see that with some Wikipedia entries, for instance. I've seen people do that with respect to trademarks, and arguments that the trademark is a generic. Actually building out a Wikipedia entry to put together all the information that the Trademark side of the Patent Office would need to rule that a certain trademark was gonna be a generic. And there's no reason from a patentability standpoint, from a standpoint of discussing technology you couldn't do the same thing, really explain the background of technology and how it's evolved, but there's just so far as I know I don't think there's one place where technology is talked about like that.
Erik Heels
Steve makes a good point about giving, throwing it to Congress, and saying, hey, if you want to fix the Patent Act, fix the Patent Act. If you want to put an exception for software patents in like Europe did, you know, amend the Patent Act to do so.
Denise Howell
Yeah, that was going to be my next question, whether internationally other patent validating organizations have a smoother or do a better job of dealing with this issue. So, in Europe, it's been expressly carved out so that you can have software patents, is that correct?
Erik Heels
That you cannot.
Denise Howell
You cannot. So they've been found to be too abstract, too vague, not sufficiently passing Steve's "whiz bang" test.
Steve Nipper
Hahaha. Well, you know, the difference in the United States is that Patent Reform Acts that have taken place in the last few years, you always see this. It ends up being IT and Software versus Bio and Pharma on the other side, where you have IT that, you know, they're pushing patent reform measures that are in their favor, some of which are an attempt to destroy the patent system. Pharma and Bio don't like that. And so you have this great "head-butting" that never goes anywhere, because if they stall out... you know, and what probably a sensible approach to dealing with reform would be for IT and Software to specifically look at doing that -- carve out an exception for their particular industry where you can't have patents in that area, instead of attacking the system as a whole, because then they would lose a lot of that opposition that some of the other industry groups have...
Matt Buchanan
It would be interesting to see them try to mount that, because I'm not convinced that the industry could speak with one voice. They've spoken with one voice in reform efforts to date because, like Steve said, they've kinda lined up against Pharma and Biotech but if they went in with the tactic of, alright, lets set up some exceptions or some rules that only apply to these types of inventions, software, maybe business methods. I don't think that they all agree on the issue that software should not be patentable.
Erik Heels
And even, furthermore, here`s a dispute about patent law before the Supreme Court, something that happens very rarely, and where we are debating over the meaning of words and that`s the Court`s job is to do, is to explain to us what the meaning of words are, and in none of the three opinions does anybody try to define any of the following: "abstract idea" "software patent" "business method". It's stunning, really, the lack of discipline that this opinion displays.
I think this is probably the worst, most poorly reasoned Supreme Court decision I`ve ever read.
Wanna to know what Erik really thinks?
Read A Mere Mortal's Guide To Patents Post-Bilski (Or Why §101 Is A Red Herring).
Wondering what a comprehensive database of patents, patent applications, and non-patent literature might look like? IP.com's new Intellectual Property Library and the Prior Art Database.
And please et us know what you think, in the comments below.
