Who'd want to patent this?
The Federal Circuit today upheld the affirmance by the Board of Patent Appeals and Interferences of a patent examiner's rejection of an application to patent a method of hedging risk in the field of commodities trading. In re Bilski, No. 07-1130 (Fed. Cir. Oct. 30, 2008) (en banc).
Got that?
Neither does Blawgletter, but as best we can piece together the decision is to a Big Deal. The four-page list of counsel — including a Great Many amici curiae — gave us a hint. Then, on the very next page, we saw that the court heard the appeal en banc. And the 12 judges issued five opinions — a 9-3 majority, one concurrence, and three dissents. Did we mention the 132-page length of all that ink-spilling?
The kerfuffle centered on what Congress meant when, in 1952, it added "process" as patent-eligible subject matter under section 101 of the patent statute. The court grappled with whether the Bilski patent application recited a "fundamental principle" of the universe and therefore couldn't qualify as patentable. Because, you see, one can't pre-empt others' use of fundamental principles.
The court resolved the question by using a limiting "machine-or-transformation" test, which it illustrated thus:
A claimed process involving a fundamental principle that uses a particular machine or apparatus would not pre-empt uses of the principle that do not also use the specified machine or apparatus in the manner claimed. And a claimed process that transforms a particular article to a specified different state or thing by applying a fundamental principle would not pre-empt the use of the principle to transform any other article, to transform the same article but in a manner not covered by the claim, or to do anything other than transform the specified article.
Bilski, slip op. at 11. The court held that the Bilski application failed the machine-or-transformation test.
We think Bilski will bring joy to those who — like Michael Crichton — feared that the U.S. Patent and Trademark Office would start letting people win a government monopoly on basic scientific discoveries and the like.
