In the last post, we dealt with Justice Stevens’ opinion; in this final post on the Bilski decision, we discuss Justice Breyer’s opinion.
Justice Breyer’s Opinion
Justice Breyer begins his opinion by concurring with Justice Stevens that the Bilski application must be rejected on grounds of claiming a business method since a business method is not a patentable process within the meaning of “process” under Section 101.
He then states that the purpose of his opinion is to summarise the points of law commonly agreed upon by all the Judges, which are as follows:
1. The Bilski application undeniably claims an abstract idea
2. Although section 101 is broad, it is not without limitations. The judicially-developed limitations are phenomena of nature, mental processes and abstract ideas. These limitations are imperative because the purpose of patent law is not restricted to determining what merits a patent, but also to etch what is free for all to use.
3. He concedes that the MT test has helped the Court on several occasions in the past and cites Diehr and Benson to make his point.
4. That said, the MT test has always been an important clue and was never intended to be the sole test of patent eligibility.
5. He again qualifies the above observation that just because the MT test is not be treated as the sole test, it does not follow that anything which produces a useful, concrete and tangible result is eligible for a patent grant.
6. He concludes finally that the opinion of the Court is not meant to undermine the utility of the MT test nor to state that certain technologies lie beyond its reach.
One is not clear as to what the final observation means; but if one had to harmonise its import, it could mean that if the MT test can be applied justifiedly to a current technology, and if an application is rejected for failing to pass muster, an applicant cannot cite the Court’s decision to challenge the rejection on grounds that had a different test been applied, his application would have been accepted. Since if the applicant were to be allowed to do that, every case where the MT test can be rightly applied would be a potential one for litigation before the Court.
Simply put, the Court acknowledges that certain technologies deserve better tests than the MT test, but desists from identifying what those technologies are.
Although the judges seem to agree that the Bilski application claims an abstract idea, they are divided on the width of the meaning to be imputed to “process” and consequently, patent eligibility of business methods. The majority view however is that business methods are patentable, but need a higher standard for grant.
We welcome information from our readers on the impact of this decision on guidelines of the USPTO to its examiners on examination of applications, and the possible moderation of the MT test.
Position under Indian law
The US and Indian law could be cited as classic examples for positive and negative definitions. The presence of a positive definition could be the reason that an applicant can have a field day in the Court even if his application claims a business method. Section 3(k) of the Indian Patents Act expressly bars grant of patents to business methods.
Of course, one still doesn’t deny the possibility of litigation on whether an application claims technical subject-matter or a business method. But this doesn’t take away anything from the fact that our law is relatively clear….atleast on paper.
“Interestingly”, patentability of softwares has not been deliberated much in the Bilski decision, when tomes of literature were produced on software patents after the Federal Circuit decision.
We welcome our readers to point out other critical aspects of the decision which we may have missed out on or corrections to our understanding of the decision.
A basic question, how MT-test can be used for “abstract ideas”? The test is not the sole confirmatory for patentability decision. tomorrow if any invention say, in recent medico diagnostic methods satisfies 35 usc 101,102, 103 and 112 but doesn’t clear MT then what is its fate?
Is there any limitation for MT test?
regards
SC
Hi Anon,
I dont think the MT test needs to be applied if one could establish abstraction by proving lack of specificity. That said, there could be cases where an application may deal with a patentable technology, let’s say automotive technology, and could yet be wallowing on an abstract plane. So eligibility of an invention under the 4 categories in section 101 and abstraction can be dealt with separately. Therefore, if the invention has to cross the threshold test, it has fall under one of the 4 categories in section 101 and have a certain degree of specificity.
Your point on diagnostic methods not clearing the MT test is what the decision addresses. The Court states that if the technology requires a different tool of appreciation, and is rejected for failing to clear the MT test, then th applicant would have case for an appeal. I think in light of this decision the word “test” used with MT is a misnomer, we should probably call it a “tool”.
The Court does not seem to recommend any particular limitation, but when it it says that news tests could be evolved, it means a new set of limitations on the applicability of the MT tool too may be evolved.
Bests,
Sai.
From the way the judgment is written, it seems to me that four judges want to take the patent law back to the time of the writing of the US Constitution and other four want to keep it in the present.
One thing is clear though that the Supreme Court’s judgment is a ringing endorsement for Chief Judge Rader’s dissent. Judge Rader had specifically written: “Because Bilski claims merely an abstract idea, this court affirms the Board’s rejection.”