Sept 10: Scope of Patentable Subject Matter, Bilski ruling

KEI is hosting a brownbag lunch to discuss the scope of patentable subject matter with reference to the Supreme Court's forthcoming decision on Bilski's appeal.

When: Thursday, September 10, 2009
Time: 12:00-2:00pm
Location: Knowledge Ecology International (KEI)
1621 Connecticut Ave NW, Suite 500
Washington, DC 20009 Tel +1 202 332 2670

The meeting will include presentations by:

Brian Kahin, CCIA
John R. Thomas, Georgetown University Law Center
Dan Ravicher, Public Patent Foundation and Cardozo Law School


Many concerns have been raised in the past 15 years about the radical expansion of patentable subject matter to include all forms of software, human activities (business methods), and diagnostic information. This expansion took place with virtually no public input. As one treatise puts it:

[B]road notions of patent eligibility appear to be in the best interest of the patent bar, the PTO, and the Federal Circuit [CAFC]. Workloads increase and regulatory authority expands when new industries become subject to the appropriations authorized by the patent law. Noticeably absent from the private, administrative and judicial structure is a high regard for the public interest. [1]

As a result, virtually all human activity became subject to patenting, including established civil liberties. As Professor Thomas, Georgetown Law, has written, “the patent law allows private actors to impose more significant restraints on speech than has ever been possible through copyright.” A wide of variety of tax avoidance strategies have been patented, despite the opposition of the accounting profession. Patents disadvantage open source software and threaten the development of and use of open standards. Health care faces patents linking symptoms and conditions with treatments.

Last year, the Federal Circuit cut back on the scope of patentable subject in In re Bilski, by limiting process patents to either physical transformations or use tied to particular machine. However, the Supreme Court recently agreed to hear Bilski’s appeal and will soon issue its first decision on the scope of patentable subject matter in 28 years. 44 amicus briefs were filed in the first round; final amicus filings are due October 2.

This is the first time since 1981 that the Supreme Court will address the limits of patentable subject matter. This meeting will provide background, a survey of the response filings and an opportunity for discussion.

[1] Roger E. Schechter and John R. Thomas, Intellectual Property, West Hornbook Series, 2003, p. 314.

Bring your lunch! We'll provide coffee and soft drinks.

RSVP: Malini Aisola: malini dot aisola at keionline dot org