| | Three judges dissented. Judge Mayer felt the Court opinion did not go far enough, and should have categorically excluded from future patents all business methods (see above). He wrote that "[t]he majority's proposed "machine-or-transformation test" for patentability will do little to stem the growth of patents on non-technological methods and ideas. Quite simply, in the context of business method patent applications, the majority's proposed standard can be too easily circumvented. ... Through clever draftsmanship, nearly every process claim can be rewritten to include a physical transformation. Bilski, for example, could simply add a requirement that a commodity consumer install a meter to record commodity consumption. He could then argue that installation of this meter was a 'physical transformation,' sufficient to satisfy the majority's proposed patentability test." Judge Mayer stated, "The majority's approach will encourage rent-seeking on a broad range of human thought and behavior. For example, because organizing a country into a democratic or socialist regime clearly involves a physical transformation, what is to prevent patents from issuing on forms of government?" | | Three judges dissented. Judge Mayer felt the Court opinion did not go far enough, and should have categorically excluded from future patents all business methods (see above). He wrote that "[t]he majority's proposed "machine-or-transformation test" for patentability will do little to stem the growth of patents on non-technological methods and ideas. Quite simply, in the context of business method patent applications, the majority's proposed standard can be too easily circumvented. ... Through clever draftsmanship, nearly every process claim can be rewritten to include a physical transformation. Bilski, for example, could simply add a requirement that a commodity consumer install a meter to record commodity consumption. He could then argue that installation of this meter was a 'physical transformation,' sufficient to satisfy the majority's proposed patentability test." Judge Mayer stated, "The majority's approach will encourage rent-seeking on a broad range of human thought and behavior. For example, because organizing a country into a democratic or socialist regime clearly involves a physical transformation, what is to prevent patents from issuing on forms of government?" |
| | + | :The patent system has run amok, and the USPTO, as well as the larger patent community, has actively sought guidance from this court in making sense of our section 101 jurisprudence. See Supplemental Br. of Appellee at 3 ("[The Federal Circuit] should clarify the meaning of State Street and AT&T, as they have been too often misunderstood."); Br. of Fin. Serv. Indus. at 1 ("The rise of [business method patents] in recent years has ... led to uncertainty over the scope of the patents granted and, more fundamentally, the definition of patentable subject matter itself. [We] seek a workable standard defining the scope of patentable subject matter, one that ... provides clear guidance to the Patent and Trademark Office ... and the public."); Br. of Samuelson Law, Tech. and Public Policy Clinic at 1 ("Ever since State Street, the [USPTO] has been flooded with applications for a wide variety of non-technological 'inventions' such as arbitration methods, dating methods, tax-planning methods, legal methods, and novel-writing methods. These applications have eroded public confidence in the patent system and driven up the cost and decreased the return for applicants seeking legitimate technological patents." (footnote omitted)); Br. of Assoc. of Am. Medical Colleges at 29 (arguing that "broad swaths of the public and certain industry sectors" have lost respect for the patent system and that "[the Federal Circuit] should act, even if its actions mean unsettling the settled expectations of some"). The majority, however, fails to enlighten three of the thorniest issues in the patentability thicket: (1) the continued viability of business method patents, (2) what constitutes sufficient physical transformation or machine-implementation to render a process patentable, and (3) the extent to which computer software and computer-implemented processes constitute statutory subject matter. The majority's "measured approach" to the section 101 analysis, see ante at 25, will do little to restore public confidence in the patent system or stem the growth of patents on business methods and other non-technological ideas. |
| | + | :Where the advance over the prior art on which the applicant relies to make his invention patentable is an advance in a field of endeavor such as law (like the arbitration method in Comiskey), business (like the method claimed by Bilski) or other liberal--as opposed to technological--arts, the application falls outside the ambit of patentable subject matter. The time is ripe to repudiate State Street and to recalibrate the standards for patent eligibility, thereby ensuring that the patent system can fulfill its constitutional mandate to protect and promote truly useful innovations in science and technology. I dissent from the majority's failure to do so. |
| | Two additional Judges dissented on the grounds that the Court went too far in excluding subject matter from patentability. Judge Newman stated: | | Two additional Judges dissented on the grounds that the Court went too far in excluding subject matter from patentability. Judge Newman stated: |