On the Concurring Opinions Blog, Professors Magliocca (Indiana) and Miller (Lewis & Clark) have been wondering when the Supreme Court will release its decision on patentable subject matter.
Professor Miller writes the following:
I … did a little digging on opinions issued from the Court’s first two sittings – the one starting Oct 5, and the one starting Nov 2. Bilski was in the second of these two sittings . . . If the past is any indication, one would expect each Justice to write about 3 majority opinions from this group. Perhaps Justice Sotomayor, as a newbie, would be assigned 2. . . . The Court has issued opinions in 18 of the 26 cases from its first two sittings; thus [8] remain. Among those yet to issue, there are some that are likely to produce fireworks, such as (a) Stevens, the animal cruelty video/free speech case; (b) Buono, the religious symbol on gov’t land; (c) McGhee, the prosecutorial immunity case; and (d) Graham and Sullivan, both challenging Florida’s life-without-parole sentences for juveniles. From those two sittings, the following Justices have written the stated number of majority opinions:
I don’t know when Bilski will issue. But I’m pretty confident Justice Stevens will author the majority opinion. He is, of course, the author of Parker v. Flook and the principal dissenter in Diamond v. Diehr. |
“So it IS by disseminating information then, that the progress of useful arts is promoted. Following this blog, I had supposed that it was otherwise, that such promotion is accomplished by granting limited term monopolies, the dissemination of the enabling disclosure being a by-product, the timing of which dissemination (like, say, at patent grant) being of no importance.”
Maxie,
I really shouldn’t be surprised by the daftness of your posts, and it should be evident that you just don’t listen to your betters here. I only been tellin ya (and everyone) that it be the Quo that be important. You really fail to understand the Quid Pro Quo concept dontcha? Who gets what and all that. Hint – the limited term monpoly is the quid – that’s what the government GIVES to get what it wants.
So it IS by disseminating information then, that the progress of useful arts is promoted. Following this blog, I had supposed that it was otherwise, that such promotion is accomplished by granting limited term monopolies, the dissemination of the enabling disclosure being a by-product, the timing of which dissemination (like, say, at patent grant) being of no importance.
Quiliro, any further thoughts? BTW, you might want to check your spelling, unless of course you wrote anal-ized deliberately, mindful that this is a blog for patent lawyers.
IANAE – right again (and again and again…).
Maybe they haven’t analized how knowledge was discovered and creation spurred before patents
It was discovered in secret and jealously guarded to make sure the public never found out about it. That was the only way to keep other people from copying for free the invention that you spent so much time and money developing.
How knowledge was discovered and creation spurred before patents is the exact reason patents exist today to promote the useful arts.
Some people still think restricting knowledge and creation will promote the discovery of more knowledge and incentivate more creation. Maybe they haven’t analized how knowledge was discovered and creation spurred before patents and copyright despite the precarious conditions of communications at that time.
UPDATE as of 5/17:
Roberts wrote the “Stevens” (animal cruelty) decision.
Kennedy wrote both the “Buono” and “Graham” decisions.
The “Sullivan” decision was dismissed.
Justice Stevens still hasn’t written a majority opinion that from that group.
Time to double down on the prediction that he is writing Bilski (for the majority).
Oh, I thought I might revive this thread based on an observation by the Mighty Quinn at
link to ipwatchdog.com
“at least Gurry’s opinion that a grace period is possible, if not likely, worldwide.”
That’s right Maxie, the mighty US Patent system grace period Gold Standard reappears.
Gotta love the USA.
I went ahead and looked at the opinions issued since April 5, and here is the new tally:
Breyer 4
Roberts 4
Alito 4
Scalia 3
Ginsberg 3
Sotomayer 3
Stevens 1
Kennedy 0
So does anyone know how many more opinions we epect to be delivered by the end of June?
Is there any update available regarding how many opinions have now been written by each Justice? Can we update this prediction?
Posted by: IANAE | Apr 12, 2010 at 09:44 AM: I kinda get how someone could misread “we give Congress the power to grant patents” as “Congress should grant patents”,
You can say this until you are blue in the face and it will be no more true than saying the world is flat.
And until at least 5 Supreme Court Justices agree with your interpretation and explicitly rule there is no Constitutional Right to a patent, or Congress Amends the Constitution, Inventors STILL have a constitutional Right to a patent.
Inventors Win. You Lose. Deal with it!
OT, but cannot resist this notice to MaxDrei,
Looks like some actual emperical stuff (and you thought the Office simply just made stuff up):
link to citeulike.org
None of us want a con law course from someone who doesn’t know the constitutional basis for trademark law.
What have we got to lose? It’s free, and it’s not like any of us have a bar exam coming up.
I kinda get how someone could misread “we give Congress the power to grant patents” as “Congress should grant patents”, but I’m really curious to see how AI twists the so-called “Intellectual Property Clause” to cover trademarks. Particularly in view of this little case. I know, I know, it’s not the Federal Circuit. But still.
Quoth the Supremes at page 93-94: “Any attempt, however, to identify the essential characteristics of a trademark with inventions and discoveries in the arts and sciences, or with the writings of authors, will show that the effort is surrounded with insurmountable difficulties.”
AI will have to be quite Actually Inventive to get around that one.
It’s been awhile, but which school starts in April?
Man, I bet NAL is in some private tutored elitism program. That’s how she gets a personal assistant.
What money won’t buy.
NAL’s just going into law school and she ranks an assistant?
Man, I gotsta get me one of those.
Hobbes, Noise finally got accepted into a law school, so she’s going to be busy and out of the picture for a while.
“a Constitutional (R)ight to politely ask”
as opposed to not asking politely?
Miss Manners has a constitutional character?
“WE THE PEOPLE have a Constitutional (R)ight to politely ask Congress to grant us exclusive (r)ights to our Intellectual Property.”
FIXT
I am aghast (and the same time strangely honored) that I am classed with the master IANAE. I don’t even like fish.
It’s too bad that it is not a Constitutional Right to our Anti-intellectual Property. You would have the perfect acronym.
Posted by: Thomas Hobbes | Apr 11, 2010 at 09:18 PM: Trademarks are Intellectual Property as much as Patents are and therefore covered under the same Intellectual Property Clause of the US Constitution as are Patents.
Go get ’em, AI.
Noise, you want to jump in here and confirm AI’s position, before this argument gets out of hand? ”
No need for Noise or anyone to jump in. All I have done is point out the fact that WE THE PEOPLE have a Constitutional Right to our Intellectual Property.
What other laws may or may not cover trademarks is a red herring topic and a distraction from the facts. The specialty of IANAE and Dear Ping.
I think NAL said that teh playground was open.
Me, I’m looking for chubby kids with lunch money.
Trademarks are Intellectual Property as much as Patents are and therefore covered under the same Intellectual Property Clause of the US Constitution as are Patents.
Go get ’em, AI.
Noise, you want to jump in here and confirm AI’s position, before this argument gets out of hand? The nihilists are gaining confidence, what with your reduced presence lately, here on our beloved Trainwreck.
WE THE PEOPLE have a constitutional right to demand a timely decision on Bilski! SCOTUS, stop lollygagging and dish. 6, hit your boy Stevens up on Facebook and tell him to get opinionating. Don’t make me start tweeting!
Perhaps Stevens is not writing majority opinions because he does not feel up to doing so. Prof. Miller’s article reads like numerology.
“Obama will appoint a younger , smarter, and more technology saavy justice to replace Steven’s and the decision will be overturned in a couple years at most.”
Indeed, I agree, although it will likely be a little bit longer than “a few years”. Any little remnants of feelings of pity or succor that Stevens might still harbor for such claims will be wiped out by his successor. We shall know him by his name and his actions, he shall be known as THE REMORSELESS ANNIHILATOR!!!!!!!!!!!!!!!!!!
“Was this the work of a conservative or of a run amok liberal?”
OR A DESTROYER!!!!!!!!!!!!!!!!?????????????
I think A DESTROYER!!!!!!!!!!!!!!!!!!!!!!!!
JV,
The only thing better than a lesson from AI would be a lesson on any topic in US jurisprudence from a Brit who would like to see the better and stronger US patent “improved” to be like ROW.
Geesh, next thing you know he’ll be trying to equate art with patentable subject matter glibly using words like “enable” and “useful”.
AI. A late period Rothko or Miro was a new way for an artist to go about his business, scientifically made by a man, under the sun; it was a work of technical character, conceived, reduced to practice, new, not obvious, enabled, useful, and sufficiently disclosed for it to be reproduced. Yet, like the universe itself, it is composed of at least 70% inexplicable dark matter.
But all of that is still not enough, to render it patentable. What would it take, I wonder, to render it patentable.
Posted by: Just Visiting | Apr 10, 2010 at 12:46 AM None of us want a con law course from someone who doesn’t know the constitutional basis for trademark law.
___
That’s what you said about the Constitutional Right to a patent and look how that debate turned out. Sure you wanna start a new debate on the constitutionality of trademarks? Go ahead, Make my day.
“Do you really need me to give you a remedial course on Property as a conventional Right under the US Constitution?”
None of us want a con law course from someone who doesn’t know the constitutional basis for trademark law.
Posted by: Ned Heller | Apr 09, 2010 at 06:16 PMThen we have the matter of Flook, one of the worst patent cases of all time. Was this the work of a conservative or of a run amok liberal?”
Stevens has been holding on to avenge Flook the way Rich held on to strike down anti business methods in State Street.
If indeed Bilski does take us back to the pre Flook era with Steven’s writing the opin no less, it wont be for long.
Obama will appoint a younger , smarter, and more technology saavy justice to replace Steven’s and the decision will be overturned in a couple years at most. Similar to the way events transpired after Flook.
Posted by: IANAE | Apr 09, 2010 at 04:40 PM: Trademarks are commerce clause. Also, no more a constitutional right than patents – though much more a common law right.
Trademarks are Intellectual Property as much as Patents are and therefore covered under the same Intellectual Property Clause of the US Constitution as are Patents.
Bottom line Copyright, Trademarks, and Patents are Constitutional Rights.
One would think that after thousands of post on this subject and in depth references you would know this fact by now.
Do you really need me to give you a remedial course on Property as a conventional Right under the US Constitution?
Posted by: Paul Cole | Apr 09, 2010 at 04:00 PM: I have never had to write a specification for a neutrino or a hadron invention.
Do you know any patent attorney who has?
And the mind boggles at the thought of a combined hadron and business method invention.”
Paul:
Every invention at its core is a business method. Let that boggle the mind for a while.
Stevens once praised Bork. link to highbeam.com
Stevens even thought of himself as a conservative.
Then we have the matter of Flook, one of the worst patent cases of all time. Was this the work of a conservative or of a run amok liberal?
“And the mind boggles at the thought of a combined hadron and business method invention.”
Sorry Paul, an extensive waste of taxpayer dollars is not novel.
There is a Constitutional Right to a patent, as well as a Copyright, and Trademark as so guaranteed by the Intellectual Property Clause of the US Constitution.
Trademarks are commerce clause. Also, no more a constitutional right than patents – though much more a common law right.
>>well anyway.Obviously no need need to accent >>the positive NWPA.
OK. I’ll stay very negative.
Actual Inventor
I have never had to write a specification for a neutrino or a hadron invention.
Do you know any patent attorney who has?
And the mind boggles at the thought of a combined hadron and business method invention.
I’m happy you’re amazed, Inventor. We have that in common. I too am amazed at some of the stuff I read on this blog.
We probably also have it common that we await with keen anticipation the SCOTUS opinion in the Bilski case.
You misunderstand my position, I think. I’m not denying that there is an infinitely large number of patentable inventions in the area of methods of doing business. If it wasn’t for businessmen paying we patent attorneys to protect their business assets we would have little or nothing to do.
Posted by: ping | Apr 06, 2010 at 02:45 PM:” there is no Constitutional Right to a patent.”
Troll bait as your post is dear Ping, it still needs to be addressed nonetheless in the interest of fact, and education.
There is a Constitutional Right to a patent, as well as a Copyright, and Trademark as so guaranteed by the Intellectual Property Clause of the US Constitution.
Posted by: MaxDrei | Apr 06, 2010 at 09:57 AM: Look, when the Constitution was written they knew the difference between natural philosophy (science) useful arts (technology, engineering, applied science, promotion of technical progress), methods of doing business, and the humanities (fine arts). What has changed since then, pray?
_______________
Surely you jest? But even if you do this blog and I fear the Patent Professional Community is filled with those that do not. So for the record here are just a few of the many changes that have occurred in science and technology that you and perhaps our Steven’s are not fully cognizant of.
Albert Einstien E=MC (2)
The Neutrino Particle.
The Super Qauntum Grand Unified Field.
The Large Hadron Collider up and running, colliding billions of protons at seven tera electronvolts!
In the face of all this science and technology, how you Max and your English Mates can actually claim business methods are not patent eligible (aka science and technology) and still expect to regarded as learned and intelligent individuals is simply amazing!
Seems… that’s a hardly used word…. well anyway.Obviously no need need to accent the positive NWPA.
With Justice Stevens retiring, might he write less than hi9s share of opinions? It seems counter productive for a retiring justice to write a majority opinion, becasue the person most holding that opinion will not be around to uphold and enforce it in the immediate future. Or maybe the 20 year stare decisis effect will be just as strong even with his immediate departure, due to the Court’s propensity for refusing to overule itself on any case less than 20 years old. Any opinions on that? What does history indicate?
Mah man Stevens will need to go out with a bang!
link to news.yahoo.com
Surely this will be a great decision.
Well, it is settled that J. Stevens is leaving. Thank goodness for 101 issues, but outside of patent law, I greatly admire Justice Stevens and usually agree with his opinions.
“the USA stays with its system for the foreseeable future, and ROW with its. Each to optimise its own and we’ll see in the fullness of time which is the “Gold Standard”.”
Maxie,
Several of your wonderfully bogus ideas can be seen conflicting in this post.
Your “universality of patent law” is in obvious shambles. Do you persist in holding onto that nonsensical philosophy?
Your jealousy and hatred of the better and stronger US patent is evidenced by your refusal to acknowledge the truth of the Gold Standard. Why wait for the fullness of time? The strength of the US patent, even given the mucked up job of shoddy prosecution, so outshines your proselytizing putrid of everything EP, that your constant commercials are like an empty wagon, noisily banging down the street.
“n three years it’ll be MMXDrei.”
And we’ll need to drink a lot more when that happens.
Besides I don’t believe any of the regular Bilski critics are even Actual Inventors so their opinion counts even less.
I think you’ll find nine of them have an opinion that counts a lot more than any inventor – including Bilski himself.
But IANAE, try ordering in London, even today, a half a litre of beer and see how much you get.
Well obviously you didn’t go metric with your beer. You’d have had to replace all your pre-calibrated pint glasses. Besides, nobody should be ordering half an anything of beer. If the full unit of measure exists, why drink less?
So, what the current date in Roman numerals?
“MMX?”
In three years it’ll be MMXDrei.
“That depends on what you mean by “meritorious”, but either way it’s hard to look at Bilski’s claims (assuming you’re not Bilski himself) and come away with a feeling that he ought to get a patent.
Is that the sort of case you want before the Supreme Court when they decide what is or is not entitled to a patent?”
_______________________
It doesn’t matter what you think of Bilski’s invention. Besides I don’t believe any of the regular Bilski critics are even Actual Inventors so their opinion counts even less.
But the bottom line is this, this case, like all 101 patent cases simply needs to be decided based on Congressional intent-USC 101, and an Inventors Constitutional Right to his/her discovery.
Stick with that and Bilski gets his patent slam dunk!
Whether it is “meritorious” or not is no ones affair but the consumers.
Well, at least we do not use, much, the Empire’s numbering system.
I, II, III, IV, etc.
That said, it would seem strange to see anyone who is the “2nd” or “3rd” use 2 or 3 instead of II or III.
Queen Elisabeth 2, does indeed sound strange. Queen Elisabeth II is much, much better.
So, what the current date in Roman numerals?
“MMX?”
In my country we used “gold standard” Roman Empire currency units of pounds, shillings and pence (240 to the pound), till I was an adult. My country gave up trying to bring the rest of the world round, and changed, before it became on that account the butt of everybody’s laughter, to 100 pennies to the pound. Pragmatism prevailed, and London is now the world’s biggest financial trading centre.
But IANAE, try ordering in London, even today, a half a litre of beer and see how much you get.
ping, thanks for the laugh. It is all for the best, that the USA stays with its system for the foreseeable future, and ROW with its. Each to optimise its own and we’ll see in the fullness of time which is the “Gold Standard”. Then, harmonization won’t be so much of a problem.
Has anyone thought just how much legislation in how many countries would be needed to implement this change?
Nobody actually expects it to happen. It’s a typically American way of saying that they refuse to change because they’ve never changed before, and the whole world will agree only when the whole world agrees with America.
Don’t forget, we’re talking about a country that still uses the imperial system of weights and measures that the eponymous empire abandoned long ago. Not exactly harmonization-friendly.
Has anyone thought just how much legislation in how many countries would be needed to implement this change? A daunting diplomatic task!
OT, but cannot resist this notice to MaxDrei, courtesy of my good pal Hal Wegner:
This morning as the keynote speaker at the 18th Annual International Intellectual Property Conference at the Fordham University Law School U.S. PTO Director David J. Kappos expressed optimism for enactment of the patent reform proposal now before the Congress, including the likelihood of a future global harmonization that includes an American style grace period.
Grace Period: The Director remains optimistic about the possibility that the rest of the world will introduce an American-style grace period because this represents the “gold standard” for a patent system. Panelist John Pegram noted that the first-inventor-to-file provision in the House version of the patent reform bill requires overseas grace period reforms as a trigger for implementation of this critical aspect of the legislation.
The Russian contribution to the liberation of France was not de minimis, but was indirect, and therefore omitted.
The contribution of the much-vaunted French Resistance, now THAT was de minimis!
Oh and Max, please add “r@cist” to my previous characterizations of “inarticulate” and “misandrist”.
Punches thanks for the quote which (as you might imagine) only serves to reinforce my view. And I’m most impressed that you are bilingual English/French. Who would have guessed. As to WWII you didn’t mention the Eastern front and the contribution the Russians made to the defeat of the Third Reich. De minimis was it?
IANAE, loved the reference to Basil. I’d forgotten the squirmingly embarrassing words that come after the always quoted “Don’t mention the war”. Did you know that when they broadcast FT in Spain, poor Manuel has another name, and comes from Italy, not Barcelona.
I have much French family, go several times a year, and am bilingual, so I have total license.
I must say, their cheese is the best, although the Spanish in particular are catching up, I think.
Their high-end wines are still the best, too, but they have been eclipsed in the low- to medium-end by other wines from other places in the world.
And all the French stuff you can get here is for export, and is a pale imitation of what you can get there, if you are in the know.
By the way, I recently had some of their standard-issue government champagne, and it was quite good! Nice public service, France.
And about 10 years ago, when someone over there mentioned the war, I (as it turned out foolishly) asked “Which war?”, trying to find out if they were talking about WWI or WWII.
For them, there is only ONE war, and it is WWII. I was severely rebuked.
To which I naturally responded: “Oh, the one that the Brits, Canadians, ANZAC’s, and Americans bailed you out of?”
It never gets tired. To be fair, the younger generation there is somewhat different, especially since they have a large proportion of immigrants in their ranks.
And I absolutely love the fact that the British first beat up on the French, and then had to bail the French out when someone else was beating up on them–something I wholeheartedly stick to my French acquaintances every time they wax superior about food, wine, and culture in general.
Good for you. Every time they express pride in all that food, wine, and culture that they still have, they should be made to feel bad about something unrelated that stopped happening 65 years ago. Astute observations like those are why Americans are loved and welcomed throughout the world.
Don’t mention the war. I mentioned it once, but I think I got away with it.
Max–
For your perusal.
Sotomayor: “Whether born from experience or inherent physiological or cultural differences, a possibility I abhor less or discount less than my colleague Judge Cedarbaum, our gender and national origins may and will make a difference in our judging. Justice O’Connor has often been cited as saying that a wise old man and wise old woman will reach the same conclusion in deciding cases. I am not so sure Justice O’Connor is the author of that line since Professor Resnik attributes that line to Supreme Court Justice Coyle. I am also not so sure that I agree with the statement. First, as Professor Martha Minnow has noted, there can never be a universal definition of wise. Second, I would hope that a wise Latina woman with the richness of her experiences would more often than not reach a better conclusion than a white male who hasn’t lived that life.”
To give this the tearing-apart that it truly deserves would take more time than I have right now.
You can decide for yourself.
And Paul, I would have a beer with you any day. It would likely remind me of the days where I would drink with the guys from Sandhurst. Except it would have to be a real beer, not an American-type, and we would have to talk about something other than U.S. patent law.
And I absolutely love the fact that the British first beat up on the French, and then had to bail the French out when someone else was beating up on them–something I wholeheartedly stick to my French acquaintances every time they wax superior about food, wine, and culture in general.
I am deeply indebted to the Brits for this.
Incidentally, Punches, what I meant by “meritorious” is that the application had about as much life as Mr Praline’s parrot.
Bizarre? Really? Are you saying it is the product of an over-active imagination? If so, you can help, if you want, by expanding on your Python-esque “Nudge nudge, wink wink, know what I mean” insinuation about Judge Sotomayor that prompted my bizarre remarks.
Punches
When I express views as to patentability in the US I do so on the basis of consistent case law in the US Supreme Court going back to the early 1800’s that amply justifies the reasonable and moderate statement in KSR: “The combination of familiar elements according to known methods is LIKELY [please note that this is expressed as a probability, not a certainty or a rule] to be obvious when it does no more than yield predictable results.”
And there is the very valuable guidance in Webster Loom v Higgins 105 U.S. 580 (1881): “It may be laid down as a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention.”
With such valuable guidance from the highest judicial authority in your country, your disinclination to follow it is difficult to understand, especially as it accords with practice e.g. in the UK and before the EPO, and I suspect in most other countries in the world.
I decline to say anything ad hominem, and if ever we should meet at a conference in the USA I hope we can discuss our different opinions amicably over a suitable beverage.
Respectfully
Max, your comment was totally bizarre.
As far as I know, she did not say “I am a wise Latina”. As far as I know, she was expressing a thought entirely impersonally. Therefore, IBP, from your latest embarrassing offering, I am forced to conclude that you are of the misogynistic and r+c1st view that “wise Latina” is an oxymoron.
For once, Sarah chose exactly the right word: “snide” is spot on. I would add “pathetic”. You should be ashamed of yourself.
Okay snidely whiplash
Max–
Your comment will cause me to forever now associate the acronym ADR not with “Alternative Dispute Resolution”,
but with “American Democratic Republic”.
Nice going!
Informed readers will know to what I refer with respect to Sonia Sotomayor.
“Thanks for the warning”
Hey Mooney, don’t you have some skin cutting and some sewing to do? Don’t forget the makeup, the pumps, and that sassy silk robe. And nothing is quite the same without “Goodbye Horses” blaring in the background.
Second, reading about Paul Cole in his English public school gave me a good laugh.
I felt kind of sad for Paul when I found out he could never be in the monarchy.
Think of all those lucky Americans who can live every day the American Dream of one day being granted a title of nobility by their glorious country. Or more than one, even. They could sit around all day … collecting royalties.
ad Hominem, IBP? This:
“She is either woefully inarticulate, a misandrist, or both.”
More like ad Gynem remarks from a misogynist, I should think. And surely no way to talk about a member of the Supreme Court of the Democratic Republic of the United States of America.
Always revealing, which commentators on this blog are quickest to discover that the communication skills of others are inadequate.
I’m still wondering, which of the following postings it was, that led IBP to regret his earlier intemperate rant. But I’m glad he had his rant. First, I learned a new word. Second, reading about Paul Cole in his English public school gave me a good laugh.
By all means, IBP, keep those taxes legal.
By the way, the proximate cause of my angst today is the fact that I am working on TAXES!!!!!!!
So apologies to anybody at whom I wrongly lash out.
Grrrr…
The “feeling” that he “ought” to get a patent?
IANAE = Paul Cole?
Instead, how about the “legal determination” that he is “entitled to patent protection”?
I know it rings hypocritical considering that I went off the rails with the ad hominem, but let’s try to keep things at least a little bit legal.
An invention need not be “meritorious;” only novel and non-obvious, provided it falls within the broad statutory categories.
That depends on what you mean by “meritorious”, but either way it’s hard to look at Bilski’s claims (assuming you’re not Bilski himself) and come away with a feeling that he ought to get a patent.
Is that the sort of case you want before the Supreme Court when they decide what is or is not entitled to a patent?
Warning–total ad hominen coming:
Thanks for the warning.
Sorry INANE, Paul used the lofty word “meritorious,” which as IBP pointed out, is not the test for patentability. An invention need not be “meritorious;” only novel and non-obvious, provided it falls within the broad statutory categories. Thus, the decision is only about the extent of those statutory categories – nothing more.
IANAE–
“Patentable” implies 102, 103, 112, 101, the entire Patent Act and 37 CFR, the subject-matter of which is inventions and the rights pertaining thereto. “Patentable” encompasses “patent-eligible”.
“And for the record, I’m not British.”
And yet another reason IANAE is the man.
He should have used the word “patentable” instead,
No, “patentable” would imply 102 and 103 considerations. Paul’s trying to say there’s no invention at all, which is exactly the question before the Supreme Court.
I completely agree with Paul that the Bilski decision might be problematic if they try to come up with a general rule based on a case that’s nowhere near the boundary that rule would establish. And for the record, I’m not British.
And I personally don’t believe that Sonia Sotomayor has demonstrated that she is should be entrusted by society with the responsibility of either drafting an opinion, or with deciding an appeal.
Too late, that’s been her job for some years now.
Warning–total ad hominen coming:
re Paul Cole’s 06:32 comment:
No “meritorious” invention?
Paul is once again trying to import his personal view of patent practice into the U.S..
Now-historic comments of his, such as:
“… an examiner’s job is to decide whether an invention meets the unobviousness standard or not…”,
“I completely agree with you about unexpected results – without such results how can there be said to be an invention?”,
“On the issue of onus, there is a question whether there is an objection of lack of inventive step on the face of the document.”, and
“The message which this posting hoped to develop is positive decisions which might be included in the inventive step guidelines…”
reveal to me his misunderstanding of fundamental concepts of US patent prosecution.
Now his use of the word “meritorious” belies what I believe to be his rather tedious aristocratic posture.
He should have used the word “patentable” instead, but that would be rational and pedestrian, and insufficiently lofty for someone who seems to be so covetous of the moral high ground.
Paul Cole, likely a product of the traditionalist British school system, living in a monarchic society, exhibits all the characteristic scars.
And just deeply wishing he could be called to the House of Lords, his highest possible aspiration, since he can NEVER be in the monarchy.
Sorry Paul, it’s a tone I’ve heard all-too-often. It’s anachronistic and boring.
But it shouldn’t go unaddressed.
And I personally don’t believe that Sonia Sotomayor has demonstrated that she is should be entrusted by society with the responsibility of either drafting an opinion, or with deciding an appeal. She is either woefully inarticulate, a misandrist, or both.
In any case, she is unqualified.
“However, it was not treated conservatively.”
Therein lies the rub.
Paul, I have a feeling that we see eye to eye on many topics.
Anon
The need is that of the court to dispose of the case before it.
There may be many groups affected by the decision, each with its own agenda. But their interests, and insofar as they have put in amicus briefs their arguments, should only be relevant insofar as they affect the question before the court.
Obviously there has to be rule-making and in Bilski it is difficult to see how this can be avoided. But it is better to make a narrow rule covering the situation before the court and closely analogous situations. Comprehensive general rules are apt to have unintended consequences, and the making of such rules should be a matter of great caution.
I have argued elsewhere that the KSR decision was intended to be conservative, essentially confined to its own facts, and to demand corrections that the CAFC had already implemented in its decisions before the Supreme Court opinion in that case was handed down. Infsofar as it made observations as to patentability, it did so conservatively and there is little in its judgment which is not to be found in preceding case law. However, it was not treated conservatively.
In particular, unnecessary judicial rhetoric should be avoided. The reference to the better mousetrap in Graham adds little of value to the practitioner while gratuitously insulting inventors in the mechanical arts. And those who consider that engineering structures are predictable have not tried building and testing complex structures intended to survive real conditions. The danger is that judicial indignation when faced with what in my opinion is a plainly unmeritorious case may provoke opinions which may blight patents in a whole field of technology in which meritorious inventions may arise.
I understand it will not be a good situation, but why? What do you think he’ll say based on his decision/opinion trend?
“will say no more than they need”
Part of the problem (and a guarantee that there will be people unhappy with the decision no matter what) is that “what is needed” is hotly contested.
Whose needs?
Why that person’s (or group’s) needs?
What level of need satisfaction is possible before someone else’s needs are too adversely affected? How is the balance of needs to be considered? Where is the fulcrum to be placed?
Will a well developed and extensive opinion be rendered that will only focus on the “say no more” portion be cognizant of the fact that a Supreme Court opinion will be amplified, turned and twisted by rampant agendas? One only has to look at the conflicts of precedent to see that even leaving a term of discussion out can raise inadvertent questions and cause collateral damage in the application of the decision.
There may not be a clean simple stroke.