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| | Accordingly, the Court confirmed that "it is simply inapposite to the § 101 analysis whether process steps performed by software on a computer are sufficiently 'physical.'" But it emphasized that "a claimed process wherein all of the process steps may be performed entirely in the human mind is obviously not tied to any machine and does not transform any article into a different state or thing. As a result, it would not be patent-eligible under § 101." | | Accordingly, the Court confirmed that "it is simply inapposite to the § 101 analysis whether process steps performed by software on a computer are sufficiently 'physical.'" But it emphasized that "a claimed process wherein all of the process steps may be performed entirely in the human mind is obviously not tied to any machine and does not transform any article into a different state or thing. As a result, it would not be patent-eligible under § 101." |
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| | + | == "Technological Arts Test" == |
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| | + | The Court held that the technological arts test is nothing more that a "short-cut" for its machine-or-transformation test. |
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| | + | Judge Mayer, in dissent, sharply disagree: |
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| | + | :To the contrary, however, the two tests are fundamentally different. Consider U.S. Patent No. 7,261,652, which is directed to a method of putting a golf ball, U.S. Patent No. 6,368,227, which is directed to a method of swinging on a swing suspended on a tree branch, and U.S. Patent No. 5,443,036, which is directed to a method of "inducing cats to exercise." Each of these "inventions" involves a physical transformation that is central to the claimed method: the golfer's stroke is changed, a person on a swing starts swinging, and the sedentary cat becomes a fit feline. Thus, under the majority's approach, each of these inventions is patent eligible. Under a technological arts test, however, none of these inventions is eligible for patent protection because none involves any advance in science or technology. |
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| | + | Judge Mayer argued for excluding non-technological inventions from patentability: |
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| | + | :Regardless of whether a claimed process involves a "physical transformation," it should not be patent eligible unless it is directed to an advance in science or technology. See Benson, 409 U.S. at 64-71 (finding a process unpatentable even though it "transformed" binary-coded decimals into pure binary numbers using a general purpose computer). Although the Supreme Court has stated that a patentable process will usually involve a transformation of physical matter, see id. at 70, it has never found a process patent eligible which did not involve a scientific or technological innovation. See Diehr, 450 U.S. at 192-93 (finding a process patentable where it involved new technology for curing rubber). |
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| | + | :The majority refuses to inject a technology requirement into the section 101 analysis because it believes that the terms "technological arts" and "technology" are "ambiguous." See ante at 21. To the contrary, however, the meaning of these terms is not particularly difficult to grasp. "The need to apply some sort of 'technological arts' criterion has hardly led other countries' and regions' patent systems to grind to a halt; it is hard to see why it should be an insurmountable obstacle for ours." Cotter, supra at 885. As discussed more fully in section III, a claimed process is technological to the extent it applies laws of nature to new ends. See Benson, 409 U.S. at 67 ("'If there is to be invention from ... a discovery, it must come from the application of the law of nature to a new and useful end.'" (quoting Funk Bros., 333 U.S. at 130)). By contrast, a process is non-technological where its inventive concept is the application of principles drawn not from the natural sciences but from disciplines such as business, law, sociology, or psychology. See Thomas (1999), supra at 1168 ("[F]ew of us would suppose that inventions within the domain of business, law or fine arts constitute technology, much less patentable technology."). The inventive aspect of Bilski's claimed process is the application of business principles, not laws of nature; it is therefore non-technological and ineligible for patent protection. |
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| | == "Business Methods" Patents == | | == "Business Methods" Patents == |
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| | :In sum, the text of Section 101, its statutory history, its interpretation by the Supreme Court, and its application by the courts, contravene this court's redefinition of the statutory term "process." The court's decision affects present and future rights and incentives, and usurps the legislative role. The judicial role is to support stability and predictability in the law, with fidelity to statute and precedent, and respect for the principles of stare decisis. | | :In sum, the text of Section 101, its statutory history, its interpretation by the Supreme Court, and its application by the courts, contravene this court's redefinition of the statutory term "process." The court's decision affects present and future rights and incentives, and usurps the legislative role. The judicial role is to support stability and predictability in the law, with fidelity to statute and precedent, and respect for the principles of stare decisis. |
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| − | :Patents provide an incentive to invest in and work in new directions. In United States v. Line Material Co., 333 U.S. 287, 332, 68 S. Ct. 550, 92 L. Ed. 701 (1948), Justice Burton, joined by Chief Justice [*998] Vinson and Justice Frankfurter, remarked that "the frontiers of science have expanded until civilization now depends largely upon discoveries on those frontiers to meet the infinite needs of the future. The United States, thus far, has taken a leading part in making those discoveries and in putting them to use." This remains true today. It is antithetical to this incentive to restrict eligibility [**154] for patenting to what has been done in the past, and to foreclose what might be done in the future. | + | :Patents provide an incentive to invest in and work in new directions. In United States v. Line Material Co., 333 U.S. 287, 332, 68 S. Ct. 550, 92 L. Ed. 701 (1948), Justice Burton, joined by Chief Justice Vinson and Justice Frankfurter, remarked that "the frontiers of science have expanded until civilization now depends largely upon discoveries on those frontiers to meet the infinite needs of the future. The United States, thus far, has taken a leading part in making those discoveries and in putting them to use." This remains true today. It is antithetical to this incentive to restrict eligibility for patenting to what has been done in the past, and to foreclose what might be done in the future. |
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| | Judge Radar provided the third dissenting opinion, and he complained that the Court "ventured away from the statute": | | Judge Radar provided the third dissenting opinion, and he complained that the Court "ventured away from the statute": |