where the court held that claims to a signal with an embedded digital watermark
encoded according to a given encoding process were not directed to statutory subject
matter under Section 101, although the claims included “physical but transitory forms of
signal transmission such as radio broadcasts, electrical signals through a wire, and light
pluses through a fiber-optic cable.”
Although this uncertainty may invite some to try their luck in court, the wider
effect will be a disincentive to innovation-based commerce. For inventors, investors,
competitors, and the public, the most grievous consequence is the effect on inventions
not made or not developed because of uncertainty as to patent protection. Only the
successes need the patent right.
The Bilski invention has not been examined for patentability
To be patentable, Bilski’s invention must be novel and non-obvious, and the
specification and claims must meet the requirements of enablement, description,
specificity, best mode, etc. See 35 U.S.C. §101 (“Whoever invents or discovers a new
and useful process . . . may obtain a patent therefor, subject to the conditions and
requirements of this title.”); Diehr, 490 U.S. at 190 (the question of whether an invention
is novel is distinct from whether the subject matter is statutory); State Street Bank, 149
F.3d at 1377 (“Whether the patent’s claims are too broad to be patentable is not to be
judged under §101, but rather under §§102, 103, and 112.”). I don’t know whether
Bilski can meet these requirements—but neither does this court, for the claims have not
been examined for patentability, and no rejections apart from Section 101 are included
in this appeal.
2007-1130
36