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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