'Clues' for Determining Whether Business and Service Innovations are Unpatentable Abstract Ideas

Year: 2010

Abstract: Jason Schultz
University of California, Berkeley - School of Law

Pamela Samuelson
University of California, Berkeley - School of Law

The Supreme Court’s decision in Bilski v. Kappos made it clear that generalized methods of financial hedging are abstract ideas that are ineligible for patent protection. However, the Court left the framework for determining abstraction versus concreteness in future cases unclear, offered only “clues” for drawing such distinctions.

In this article, we attempt to provide the beginnings of such a framework. We start by discussing the clues we think are most likely to be useful to the Patent Office and the courts in developing a jurisprudence of abstractness as a disqualification from patent protection. We then discuss why, in light of these clues and in line with sound patent policy, business and service method innovations, while not categorically unpatentable, should still generally be excluded from patent protection as abstract ideas. Finally, we provide further support for this approach by suggesting that taking the clues of unpatentability seriously may facilitate administrative and judicial efficiency in reviewing patent claims when assessing whether they satisfy patent subject matter rules.

Keywords: patent, Bilski, abstract idea

Link: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1690882