While the Supreme Court prepares to hear a case that will determine if a way of thinking about a problem can be protected by a business methods patent, a group of accountants and consumer groups is hoping to eliminate tax strategy patents, a subset of the business methods class, using the legislative route.
On Monday, November 9, 2009, the Supreme Court will hear oral argument in In re Bilski, and two CLE providers plan to offer same day or next day coverage of the proceedings.
The juxtaposition of Bilski and Prometheus demonstrates the far reaching implications of the question of what is patentable subject matter for a diverse set of industries.
But if the court tosses out the rule that business method innovations that involve a machine or transformation can be patented, what new rule should take its place? "How do we limit it (patentability) to something reasonable?" asked Justice Sonia Sotomayor. A decision is expected by the end of June.
John Whealan, of George Washington University Law School, said, "Eight justices talked. They all seemed not to agree with the plaintiff's argument."
The justices pressed J. Michael Jakes, a lawyer for Mr. Bilski and Mr. Warsaw, with hypothetical patents that they clearly found ludicrous. Justice Antonin Scalia suggested that under Mr. Jakes’s argument, a patent for “somebody who writes a book on how to win friends and influence people” might be allowed, while Justice Sotomayor suggested “the method of speed dating.”
● Patent Hawk: 'Computer whiz Justice Stephen G. Breyer chimed in. "All you do is just have a set of instructions for saying how to set a computer to do it. Anyone can do that. Now, it's a machine."'
Stewart claimed that loading software on a computer transforms it into a new machine by giving a computer “functionality it didn’t have before.” This argument doesn’t withstand close scrutiny. Obviously, it’s true that loading software on a computer gives it functionality it didn’t have before. But this is little different than saying that setting my alarm clock causes it to perform a function—waking me up at a particular time—that it wouldn’t have done otherwise. We don’t say a set alarm clock is a different machine than an unset alarm clock. It’s the same machine with different settings. Programming a computer is exactly like setting an alarm clock except that the computer can handle dramatically more complex instructions. If setting your alarm clock doesn’t create a new machine, then neither does installing Microsoft Word on your computer.
Justice Antonin Scalia said patents are given to inventions that are manufactured or produced by workmen, "not someone who writes a book about how to win friends and influence people."
