Law Professors Debate Bilski

A potentially paradigm-shifting legal case that could restrict the granting of business method patents in the United States, Bilski v. Doll has attracted the attention of policy makers world-wide, who expect its outcome to influence the international patent system (IPW, US Policy, 31 July 2009). At issue in the case is whether or not a process that only affects an abstract idea (as opposed to a physical machine or object) is patentable.

With an upcoming review by the US’s highest court on the horizon, two intellectual property law professors with opposing views on the case have discussed its merits in a debate hosted by the Federalist Society, a group of conservative and libertarian intellectuals.

The podcast of the debate is available here. The professors, Michael Risch and Joshua Sarnoff, submitted competing amicus briefs to the US Federal Court of Appeals, which heard the case last year.

Risch authored a brief with 19 other professors, available here [pdf], in support of neither party. It argues that the policy of allowing patentability on “anything under the sun that is made by man” is a wise way “not to discourage innovation in new and unforeseen areas of technology by imposing arbitrary, inflexible limits on the scope of patent protection.” Abstract ideas with no application should not be patented, the brief says, but application should not be defined so narrowly as something that affects a machine or object.

Sarnoff authored a brief with 9 other professors, available here [pdf], in support of the US Patent and Trademark Office, which rejected the Bilski patent. The brief argues in favour of significant physical transformations or steps as a requirement of patentability. It says that the precedents set by the case which made business method patents common in the US, State Street, should be restricted.

The Bilski case will be heard by the Supreme Court 9 November, according to a recently released schedule, available here [doc].