“Clues” for Determining Whether Business and Service Innovations Are Unpatentable Abstract Ideas
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Description
In June 2010, the U.S. Supreme Court ruled in Bilski v. Kappos that Bernard Bilski’s method for hedging risks of price fluctuations for commodities was an abstract idea that was ineligible for patent protection. Four of the Justices would have gone further to hold that business methods were unpatentable subject matter; that is, not the kind of “process” for which patent protection was available. Although the Court as a whole was not persuaded that business methods should be deemed categorically ineligible for patent protection, in part because the term “business method” is difficult to define with precision, Justice Kennedy, writing the opinion of the Court for himself and three other Justices, recognized that “some business method patents raise special problems in terms of vagueness and suspect validity.” After Bilski, these methods are likely to be deemed too abstract to be patentable. Justice Kennedy went on to say that it was important to set a high bar for patentability of these kinds of inventions, because otherwise “patent examiners and courts could be flooded with claims that would put a chill on creative endeavor and dynamic change.” To avoid this chilling effect on business innovation, a limiting principle was needed so that the U.S. Patent and Trademark Office (PTO) and the courts could determine which kinds of methods affecting business operations should be eligible (or not) for patent protection. Justice Kennedy pointed to the Court’s prior rulings on the unpatentability of abstract ideas as likely to provide useful guidance for achieving this purpose. Drawing on these precedents, the Court of Appeals for the Federal Circuit might, he thought, be able to “defin[e] a narrower category or class of patent applications that claim to instruct how business should be conducted, and then rule that the category is unpatentable because, for instance, it represents an attempt to patent abstract ideas,” adding that “this conclusion might well be in accord with controlling precedent.” Although Justice Kennedy’s opinion does not spell out with precision how to distinguish between unpatentable abstract ideas and patentable processes, it does offer some “clues” for drawing such distinctions that deserve attention going forward. Part II of this chapter discusses the clues we think are most likely to be useful to the PTO and the courts in developing a jurisprudence about abstractness as a disqualification from patent protection. Part III explains why, in light of these clues and in line with sound patent policy, business and service method innovations, although not categorically unpatentable, should still generally be excluded from patent protection as abstract ideas. Part IV provides 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.
Source Publication
Perspectives on Patentable Subject Matter
Source Editors/Authors
Michael B. Abramowicz, James E. Daily, F. Scott Kieff
Publication Date
2015
Recommended Citation
Samuelson, Pamela and Schultz, Jason M., "“Clues” for Determining Whether Business and Service Innovations Are Unpatentable Abstract Ideas" (2015). Faculty Chapters. 1776.
https://gretchen.law.nyu.edu/fac-chapt/1776
