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Life After Bilski at Stanford Law School

I spent the last couple of days at the Stanford Law Review symposium called The Future of Patents: Bilski and Beyond. I moderated one panel while Mark Lemley presented our article Life After Bilski, which Mark, Ted Sichelman, Polk Wagner, and I wrote. It will be published in the Stanford Law Review’s symposium issue. (If you don’t know much about Bilski, you can see my blog post or article describing the ruling and its history.)

The symposium had an interesting format – each panel had two academics (who contributed papers) and two practitioners on each panel. While the practitioners were generally outstanding (as a group, I would say the best I have seen, and the keynote by Judge James Ware was good as well), I’m going to focus this post on the academic papers, drafts of which are available on the symposium website and/or on SSRN. There is obviously much more to these arguments than my two sentence summaries here. My understanding is that video will eventually be available.

The first panel featured Mark Lemley and Peter Menell, who took very different views of the history of patentable subject matter.

Peter Menell argued that the history of the patent act, and its codification, shows that business methods were never within the types of things that should be patented. He argued that the original meaning of “art” in the 1790 patent act meant manufacturing methods, and that this meaning did not change with the re-codification in 1952.

Mark Lemley argued that gatekeeping rules, like excluding business methods, do not work particularly well. He argued instead that a better way to look at subject matter as a restriction on claiming too broadly. He used historical examples to illustrate this point and discussed how the theory differed from other claim scope theories like enablement.

The second panel looked at genetic patents in the wake of Bilski.

Rochelle Dreyfuss focused  on language in Bilski that discussed disallowance of claims that “preempt” future innovation efforts in the context of genetic diagnostics (e.g. if you have the BRCA1 gene, you are more likely to get breast cancer). She used the results of a case study showing how patents limit access to treatment to argue that one way to look at preemption is whether or not there are ways to invent around the diagnostic test to develop other ones.

Robin Feldman discussed patenting of gene sequences. She pointed out that the traditional rules about “isolation and purification” are not so applicable any more because synthetic biologists can now construct artificial gene sequences in the laboratory without having the original DNA to work with. She argued that there is no theoretical bar to patenting DNA outside of the body, but that the scope of rights granted in such patents should be limited to allow for access and future research.

The final panel focused on business methods and software.

John Duffy started by addressing Peter Menell’s approach to history, arguing that the case law leaves open the possibility of business method patenting. Instead, he argued that the reason why we did not see business method patenting like financial patents was that the technology had not developed. He described how the field has grown in engineering, and how such patents predated major court decisions addressing business method patents. He compared business methods to the growth of software patents prior to the major software patenting court decisions in the 1970’s.

Jason Schultz discussed how the PTO is grappling with implementing “abstract ideas” in guidelines that can pragmatically be followed by applicants and examiners. Part of this is determining the continuing role of the machine or transformation test in light of its being a “clue” to patentability in Bilski.

All in all is was a fun, well run, and well organized conference. Kudos the students who organized it!