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15 Lewis & Clark L. Rev. [i] (2011)

handle is hein.journals/lewclr15 and id is 1 raw text is: Lewis & Clark Law Review VOLUME 15 SPRING 2011 NUMBER 1 SYMPOSIUM BILSKi V. KAPPOS: EVERYTHING OLD IS NEW AGAIN Introduction Joseph Scott M iller .............................................. 1 Weeds and Seeds in the Supreme Court's Business Method Patents Decision: New Directions for Regulating Patent Scope Donald S. Chisum ......................................... 11 In the 2010 Bilski decision, the Supreme Court visited the garden of doctrines on patent-eligible subject matter, a garden delineated in statutory terms by Section 101 of the Patent Act. The Court rejected categorical approaches, such as an enshrinement of a machine-or- transformation test as the sole measure for a patentable process, or a ban on business-method patents, but it affirmed rejection of the pat- ent claims in question, which concerned commodities trading hedg- ing transactions, as drawn to an abstract idea. Unfortunately, in Bilski, the Court passed on an opportunity to pull some doctrinal weeds that have been proliferating in the garden for years. But the Court also planted seeds for the growth of a more rational approach to regulat- ing patent scope, one that is both consistent with the established doc- trinal structure of the patent system and sufficiently limiting of overreaching patent claims to intangible processes, business methods, and natural phenomena. Critical to development of a better approach to Section 101 pat- ent-eligible subject matter is the need to recognize a distinction between two inquiries: (1) has an inventor made and disclosed a new and useful patentable invention?; and (2) what is the appropriate scope of protection for the patentable invention? Both inquiries can and should be conducted using established and well-understood doc- trinal tools, which unlike the Section 101 patent-eligible subject mat- ter tool used by the Court in Bilski, entail full consideration of the facts surrounding an alleged invention. Used with appropriate vigor, this fact-based approach can effectively screen out virtually all claims to putative inventions that are, on analysis, only abstract ideas or natu- ral phenomena, and all claims that preempt subject matter that is old, not practically useful or beyond what the patent applicant has actually invented. There rarely would be an occasion to reach a Section 101 abstract-idea challenge, as was pressed upon the Court in Bilski. Because of the vagueness of the concepts of an idea and abstract, and the inability to clearly and objectively distinguish between (1) the millions of claims that have been included in pre- sumptively valid, existing patents and (2) the category of an impermis- sible idea (concept) preempting claim, the Section 101 abstract idea preemption inquiry can lead to subjectively-derived, arbitrary, and unpredictable results. This uncertainty does substantial harm to the

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