Bilski patent hearing considers life in general

The limits of patentability took centre stage in Bilski v Kappos at the US Supreme Court on Monday. As the crucial business methods case took representations from each side, the Supreme Justices probed the borderline between patentable and unpatentable subject matter in  many walks of life, as defined by current laws. Often touching on abstract notions of man-made processes and activities, the discussion featured prominent involvement from President Obama's recent nominee, Supreme Justice Sonia Sotomayor.

Established following a petition from inventor Bernard Bilski, the last-resort action is reviewing a 2008 Federal Circuit ruling, which held that Bilski's method for hedging risks on commodities deals was not patentable. According to the en banc ruling, the method has no technical effect under the US Patent Act's 'machine-or-transformation' test. At stake in the Supreme Court is an entire tradition of registered IP Rights.

A transcript of the hour-long session shows that the Justices were keen to tackle the patentability question head-on. Addressing Bilski's representative, J Michael Jakes, Sotomayor asked him to clarify his stance on business methods in the context of recommendations from the Solicitor General that patentable subjects must in some way be tethered to the useful arts.

'[That] does exclude some things,' said Jakes. 'It does exclude the fine arts. Speaking, literature, poems – I think we all agree that those are not included, and there are other things as well. For example, a corporation, a human being – these are things that are not covered by the statutory categories.'

Asked for his thoughts on why human activities should be protected under the 'useful arts' test, Jakes argued that the law provides coverage by defining those activities as processes. In Jakes's view, a medical procedure performed by a doctor was a sound example of this. 'That is an entirely human activity, and it has long been patentable,' he said. 'I believe that falls within the useful arts, and I believe that there is an advantage to that.

'There are really two advantages to the patent system,' he added. 'One is encouraging people to come up with new things, such as a surgical method or method of hedging risk. The other is the disclosure aspect. A doctor might choose to keep [his surgical method] secret.'

Representing the United States Patent and Trademark Office (USPTO) and its director David Kappos, Malcolm L Stewart used his time in the hearing to steer the Justices back to technically enabled inventions. Addressing Justice Scalia, Stewart used the example of Alexander Graham Bell's telecommunications patent. 'The reason that Bell's method was patentable,' he said, 'was that it operated in the realm of the physical. Bell had devised a process implemented through machines by which sound was transformed into electronic current. The current was then transmitted over a distance and transformed back into sound.

'Innovations [concerning] new techniques of public speaking, new techniques of negotiations – techniques that go to the substance of what is said – may be innovative,' he added. 'They may be valuable. [But] they are not patent-eligible because they don't deal in the realm of the physical.' The Court noted that Stewart's brief had argued that a method for hedging risk was an abstract idea, rather than a physical process.

The case continues.