After receiving an Invitation to a conference titled “The Future of Subject Matter Eligibility After Re Bilski” held yesterday and today in Bar Ilan University with sponsorship from Stanford T Colb - Intellectual Prpoperty (sic) Law and from Fish Richardson, I surfed the net to find the eagerly awaited re Bilski decision from the Supreme Court that I’d apparently missed. Surprisingly I hadn’t. The decision is still pending.
As much to find out why a speaker list including 30 academics and practitioners were discussing the topics like the “implications of re Bilski for diagnostic method patents” and “Bilski will cast a stronger shadow over business method patents than over software patents”, I tore myself away from my desk and went over to bar Ilan to participate.
I was surprised to learn that the eminent panelists had no more idea than I did as to what the Supreme Court would do, with one pointing out that the tea leaves hadn’t settled into a recognizable pattern. Two leading US IP lecturers even stated that they preferred not to lecture about patentable subject matter as they weren’t really sure about it.
In general, the speakers gave polished presentations but had little worthwhile to say. In addition to the speakers themselves and a fair sprinkling of Colb employees, the audience included a handful of IP lecturers from the Law Colleges, some patent attorneys, examiners from the patent office, lawyers and IP managers from industry. From a networking perspective, the event was a good one.
None of the lecturers on the first day came up with new arguments for including software or business methods, or gene patents and diagnostic treatments, and I came away as bemused as I had arrived, as to why hold this event now, and not wait for the US Supreme Court to rule on subject matter eligibility and then to examine the ruling.
I’ve been overtaken by events in the past. I announced a post USPTO reform conference with speakers flying in from the US and then Glaxo Smithkline got an injunction so the reforms never happened. We amended the program. I imagine that Dr. Miriam Bitton who evidently put in a tremendous amount of work to organize this Bar Ilan Conference must have been peeved with the Supreme Court’s sluggishness. Nevertheless, a change of program might have been appropriate.
I was unfortunately unable to attend the second day of this illustrious event due to other commitments. So have asked friend, Larry Rublin who was there to share his thoughts, so over to Larry:
Few, if any, of the speakers actually directly addressed Bilski, instead speaking on tangentially related topics of subject matter patentability. Really, when you think about it, it would have been hard to find 30 different academic viewpoints even if the Supreme Court had actually made a decision. Even so, I discerned two general opinions from the participants: the first opinion being that Bilski was a horrible test case that would likely affect the prosecution of business method applications, but would have little or no impact on software applications; and the second opinion being expressed by a shrug of the shoulders and a “I dunno” from those that obviously hadn’t really looked into the facts of the case.
The Commissioner’s talk was honest, enlightening, disappointing, disheartening and hopeful all at the same time. He started by reviewing the history of software patentability in Israel and addressed the unique difficulties of examining such applications. He then reviewed recent decisions by both the courts and the Patent Office without attempting to hide or explain away the glaring inconsistencies. He ended by reiterating the call for briefs on the subject and left the impression that something would change in the near future, but what that was no one was sure.
“The Highlight of the day – in my opinion, anyway – was the talk by David Barkan that highlighted the ex post facto nature of court reversals and contrasted it with the way that Congress is constrained to grandfather pre-existing states when it changes the law. Bottom line, wouldn’t it be nice if Congress could/would step in and legislate clear definitions of subject matter eligibility instead having the courts effectively create new law in the guise of “interpretation” whenever they see fit to do so without regard to the practical ramifications for those who are constrained to practice under whatever the guidelines were in effect prior to the reversal?
Several out-of-the-box ideas were presented including Kevin Collins’ take on software patentability in terms of the Printed Matter Doctrine and Ted Sichelman’s suggestion that patents be divided into two categories (invention and commercial) in order to more equitably distribute the rewards from patents developed using federal funds vis-à-vis those developed by inventors risking their own money.
By far the most unusual suggestion came from Dr. Shlomit Yanisky-Ravid who spoke on “Rethinking Subject Matter Eligibility – A Social & Gender Perspective.” Her thesis – unless I totally missed what she was saying – was that since women generally underperform their male counterparts in Maths & Sciences, they therefore effectively suffer from discrimination when it comes to subject matter eligibility. Accordingly, patentable subject matter should be broadened to include areas where women are capable of competing (and benefiting) on a more equal basis, and suggested that patentable subject matter should be expanded in an affirmative action effort to include areas such as the social sciences where women are more likely to be represented. My boss, who is one of several highly respected female patent attorneys, seemed to be somewhat annoyed by the presentation.
The single most interesting factoid that I heard during the day was from Pam Samuelson who mentioned that a survey of 700 US startups revealed that only 30% had a patent portfolio of any kind, and that even among those that did, they generally assigned rather low priority to generating patents. The 30% figure, as she confirmed to me privately during a break, is relatively constant across the startup life cycle, i.e. there is apparently no progression towards a patent-centric policy as a startup ages, nor does it appear that having a portfolio significantly impacts on the likelihood that a startup will survive. This is a factoid that I will not be sharing with our clients. In any case, despite the fact that little of practical nature was discussed – and it was, after all, an academic event – a good day was had by just about all who attended.
Both Larry and I note that the refreshments served to the public were of a high standard. Indeed, I think the Bar Ilan rogeluch were better than those served at the event that my firm, JMB, Factor & Co., hosted last month on the boundaries of patentability. See http://blog.ipfactor.co.il/2009/12/03/the-boundaries-of-patentability/
As to what will happen in the re Bilski case, the Amerikat seems to think that because of the subject matter of the Bilski claims, the ruling probably won’t change much. See http://ipkitten.blogspot.com/2010/01/letter-from-amerikat-2009-countdown_01.html
Personally, I’d like to see business methods out, software in, stem cell research in (from a Hallachic perspective, with the notable exception of J. David Bleich, most authorities concur is not a problem), gene patents in. I think the US cannot go back on TRIPS obligations and start defining non-patentable subject matter. I also believe that most patentability issues can be resolved by utility, novelty and obviousness considerations.