Weeds and Seeds in the Supreme Court's Business Method Patents Decision: New Directions for Regulating Patent Scope

Abstract

In Bilski, the Supreme Court held that claims to a commodities hedging method were not for a patent eligible "process." All the justices agreed that a "machine-or-transformation" test was not the exclusive test for a patentable process and agreed that there was no categorical exclusion of business method patents. But the Court could not muster a majority for any more specific standard, instead applying the vague "abstract idea" exclusion of prior precedent, the hoary Benson-Flook-Diehr trilogy. The Court expressed hope that the Federal Circuit would develop further limitations on business method patenting. This Essay argues that the real concern of the Justices was not with patenting abstract ideas or natural phenonema as such. Rather the Justices' intuitive concern was with undue claim scope, that is, claims that cover more than an applicant invented and, therefore, were not limited to a “new and useful” invention within the Constitutional purpose of the patent system. The majority opinion suggests a shift away from the formalistic Section 101 categories of patent eligible subject matter, such as the definition of “process” and the judicial exceptions for “abstract ideas,” and toward the traditional fact-based regulators of patent claim scope, such as enablement, novelty and unobviousness.

Keywords: patents, business methods, abstract ideas, Supreme Court, Bilski