Secondary Factors in Bilski
In a prior post I talked about my idea that the Supreme Court should use Bilski to reinterpret the statutory provision on patentable subject matter (35 U.S.C. s 101) by borrowing the test from the section on obviousness (35 U.S.C. s. 103). By asking whether an “ordinary person skilled in the art” would think that the class of processes at issue (not just the particular process being litigated) should be patentable, the Court would directly inject industry norms (and policy considerations) into that examination and make the s. 101 analysis more practical.
When I presented my paper to a conference last week, the chief criticism was that such a test would create too much uncertainty. In effect, the argument is that this would force every industry that relies on these patents (software companies, banks, etc.) to start from scratch and prove that their patents are valid. I’m not sure I agree with this line of thought (is Bilski any better in this respect?), but let’s say that I’m wrong. Is there another alternative?
I think so. Another feature of an obviousness analysis (under s. 103) is that the Court supplements the “ordinary person skilled in the art” test with secondary factors that are designed to put meat on the bones. (These include commercial success, long felt but unsolved needs, or the failure of others.) Why not borrow this idea and supplement whatever test the Court develops in Bilski with secondary factors? One of them could be extracted from the Federal Circuit’s opinion, which talks about the fact that processes involving purely mental steps should be presumed unpatentable. Another secondary factor could be an examination of business norms to see whether custom supports patentability. I’d invite you to think of other possibilities — I’m planning to modify my draft on SSRN accordingly as we get ready for the Court’s consideration of the case.