Supreme Court Hears Arguments|On Just What Is Patentable

WASHINGTON (CN) - The Supreme Court heard arguments Monday on what constitutes a patentable product. One lawyer claimed almost any nonobvious idea could be patented, while the other said it had to have a basis in technology or science.

The case could help define the ambiguous standards in granting patents, when many are crying foul over the ballooning number of patents. "How do we limit it to something that is reasonable?" Justice Sonia Sotomayor asked. "If it isn't limited, then why not patent the method of speed dating?"

Michael Jakes, from Finnegan, Henderson, Farabow, Garrett & Dunner, represented Bernard Bilski and Rand Warsaw. He argued that the United States Patent Office was too strict when it rejected the men's patent request and said the patent law should be read more broadly to accommodate unforeseen advancements.

Justice Ruth Bader Ginsburg tested the boundaries of Jakes' argument that patents should be broad. "So an estate plan, tax avoidance, how to resist a corporate takeover, how to choose a jury, all of those are patentable?" she asked.

Jakes said they would all be eligible to be patented.

Justices seemed less critical of Deputy Solicitor General Malcolm Stewart's arguments. He represented the Patent and Trademark Office and claimed that a patent had to "deal in the realm of the physical," citing the telephone as an example, where a process was implemented by machines, but ultimately admitted that there are ambiguous areas.

He said the current test used to establish whether something is patentable - whether it is a machine or whether it transforms matter - should be upheld.

Bilski and Warsaw had tried to patent a method to calculate weather-related risks associated with buying energy commodities.

Justice Stephen Breyer mentioned that under Jakes' argument, any new business idea would be patentable so long as it could be reduced to a number of steps and explained. He said every successful businessman would have something patentable.

"You know, I have a great, wonderful, really original method of teaching antitrust law, and it kept 80 percent of the students awake," Breyer said to laughter. "I could probably have reduced it to a set of steps and other teachers could have followed it. That you are going to say is patentable, too?"

Jakes replied that it might be patentable.

"Do you think that the framers would have wanted to require anyone successful in this great, vast, new continent because he thinks of something new to have had to run to Washington and to force any possible competitor to do a search and then stop the wheels of progress unless they get permission?" Breyer asked skeptically. "Is that a plausible view of the patent clause?"

Chief Justice John Roberts referred to the men's first instruction to initiate a transaction (seen below) in their non-patented process. "How is that not an abstract idea?" Roberts said.

Breyer said that in the past, patents were applied to machines, but noted that Jakes is saying to apply them to information. "And I don't know whether that patent protection will do no harm or more harm than good," he added.

Roberts questioned Stewart's argument that a patent should be rooted in technology if not rooted in science.

"If you develop a process that says look to the historical averages of oil consumption over a certain period and divide it by two, that process would not be patentable. But if you say use a calculator, then it is?" Roberts asked.

Stewart said using a computer for its pre-set function, like a calculator, would probably not meet patent requirements but he quickly discouraged the Court from going into computer software or medical technology, saying the case does not involve them.

"You thought we would mess it up," Kennedy said to laughter.

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