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.

You may also like...

7 Responses

  1. Les says:

    Why does there need to be a test. 35 USC 101 is very simple and very clear, especially when read in light of 35 USC 100.

    One only needs to “interpret” 35 USC 101, when one wants to read limitations into it that aren’t there.

    Bilski wants to patent a process. Process are patentable.

    Move on to the next test: Is it a NEW Process?

    Move on to the next test: Is it an Obvious process?

    There is already plenty of room in 103 for your business norms to be worked in. That’s where any rejections of Bilski’s claims belong (assuming it makes it over the 102 hurdle).

  2. Gerard Magliocca says:


    Well, we’ve been doing what you suggest for the last decade. How’s that been working out?

    Fundamentally, the debate comes down to whether you think 102 and 103 can work to police the limits of the statute, or whether that approach has failed and you need 101 to do the work. I’m obviously inclined toward the latter view, and Bilski may be a bad case for the Court to use because the process at issue there is so obviously obvious. But if somebody comes up with a way to get meaningful review from the PTO on 102 and 103, more power to them.

  3. Les says:

    Up until Bilski, it had been working out fine.

  4. Gerard Magliocca says:

    As Obi-Wan Kenobi might say, “It depends on your point of view.”

  5. Les says:

    Well…if whether or not “Darth Vadar Killed your father” is a lie, when in reality Darth Vader, who is alive and well, IS your father, is only a matter of a “point of view”…then yeah, in that world it would depend on your point of view.

  6. TJ says:


    I wasn’t at the conference, so I am not sure if this was raised, but my concern with your standard is that it is prone to becoming circular. We already see this with claim construction (one of many reasons it is so vague). The court interprets a claim according to how an ordinary person would read it, but an ordinary person will read it depending on how a court will construe it, because claim language is a legal instrument. No sane person of skill in the art would normally say that “comprising” means open and “consisting” means closed; that “a” means “one or more”; or sift through the prosecution history the way that courts assume them to do. Only an ordinary person of skill in the art of patent reading does so. Why won’t your test reach the same circularity? A person of skill in the art will think that the subject-matter is patentable if courts say so, and courts will say so if a person of ordinary skill in the art thinks that the subject-matter is patentable.

  7. Gerard N. Magliocca says:

    Yes, there is a circularity problem, but there are instances where a vigorous debate about patenting preceded the decision to make them patentable. (Software and financial instruments, for example.)