In my last post on Bilski, I added my Comiskey ‘fear factor’ to Paul Gardner’s analysis of post-Bilski claim strategies. In response, Mr. Gardner first notes that the Comiskey language I quoted is “dicta, supported only by arguably inapposite precedent, and presumably uninformed by any discourse in the briefing.” Beyond that, however, Gardner explains that the Patent Bar should stand-up and explain to the PTO and courts that “the application of novel and nonobvious software to otherwise computer hardware is neither ‘routine’ nor ‘typical.'”
Paul Gardner: The verbiage in Comiskey from which you opine in the September 20, 2007 issue of Patently O that “Comiskey could be read to indicate that any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious” is dicta, supported only by arguably inapposite precedent (n. 16 in Comiskey), and presumably uninformed by any discourse in the briefing (given the fact that the court remanded the case to the Patent Office for ruling on the Section 103 issue). Moreover, the opinion says only that “[t]he routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness.” (Emphasis added.) I can’t help but wonder whether such gratuitous, patent-negative dicta is in large part the unintended but predictable consequence of the patent bar too often capitulating to rejections rather than aggressively asserting their clients’ rights to protection (caused, perhaps, by clients’ limited funding of patent prosecution). By “aggressively asserting,” I mean arguing forcefully in a given case that the application of novel and nonobvious software to otherwise conventional computer hardware is neither “routine” nor “typical,” and that labeling it “routine” or “typical” at the front end is to prejudge the 103 issue and forestall reasoned analysis.
I submit that a compelling argument can and should be made that the application of nonobvious software to conventional hardware renders the combination patentable, in much the same way that purification of a naturally-occurring substance renders the purified substance patentable if its therapeutic value is nonobvious. The discovery of the therapeutic value of the naturally-occurring substance makes the purified substance nonobvious notwithstanding the fact that the purification process itself is old and well known. It seems to me that the same logic applies to nonobvious software implemented by old and well known hardware.
One of the two questions you posed last Friday was whether skilled patent attorneys will be able to alter their claim strategies to fit within Bilski’s pronouncements. I believe that it is more important than ever for the patent bar to use their high priced skills to argue against the kind of short-sighted rejections that are coming out of the Patent Office and being affirmed by the courts. The balance has clearly shifted against inventors and patentees in recent years, and only the skills of the advocate can move the balance back to the appropriate position.
Please understand that I do not take issue with your statement that “Comiskey could be read to indicate that any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious.” My concern is that, left without countervailing exposition, such commentary may discourage the patent bar from advocating the contrary.