The Supreme Court seems to be taking its time with Bilski v. Kappos. Given every IP lawyer’s interest in it, It’s like we are watching for a kettle to start boiling…
Patently-O, Professor Dennis Crouch’s blog on patent law, reports in Bilski Watch: Timing of Supreme Court Decisions that the the Court is taking longer — considerably longer — to decide this case than any other of the 18 cases it has recently decided in the field of patent law. We are now at 200+ days from the date of oral argument and counting, which is over 50 days longer than the previous record-holder, KSR v. Teleflex.The substantially longer gestation period may reflect the importance of the case.
For those who are wondering, the Court is wrestling with the question of whether a method of hedging risks of commodity prices is a type of method that can ever be patented –at least not unless it is limited to being performed on a specific computer. Claim 1 from Bilski’s patent application reads:
A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of:
(a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer;
(b) identifying market participants for said commodity having a counter- risk position to said consumers; and
(c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions
The Court of Appeals for the Federal Circuit Court followed the lead of the PTO, answering ‘no’ and adopting a test recommend by the government. According to this test, called the “machine or transformation” test, a process covered by a patent covers must be tied to a particular machine (a computer, for example) or must involve a transformation of matter. Bilski’s invention, since it was not limited to being performed on a particular computer and did not involve transformation of matter, was merely an abstract idea, not a patent-eligible type of invention, according to the test.
There are a number of different legal grounds that could be relied upon to support the ultimate conclusion that this claim was not eligible for patenting, even if its subject matter was otherwise new and unobvious. Most in the patent field presume that the Court is likely to concur with the Federal Circuit’s ultimate conclusion, and thus the Court’s decision to look at the case likely stems from concerns about the reasoning used by the Federal Circuit to support its ultimate conclusion.
Depending on the reasoning chosen by the Court, the case could have far reaching implications, or perhaps none at all, which is why so many are watching it closely. At the heart of it is a debate on what an “invention” is, and what types of inventions should and should not be eligible for patent protection. These are increasingly important questions as the United States moves from an industrial economy to one based increasingly on management and manipulation of information.
The Court is currently scheduled to release opinions every Monday through the end of June, after which it presumably will be in recess. It should be handed down by then.
(Via Patently-O: Patent Law Blog.)
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