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Thomas, John R. --- "Patent Governance in the United States: Lessons from Bilski v. Kappos" [2011] ELECD 978; in Arezzo, Emanuela; Ghidini, Gustavo (eds), "Biotechnology and Software Patent Law" (Edward Elgar Publishing, 2011)

Book Title: Biotechnology and Software Patent Law

Editor(s): Arezzo, Emanuela; Ghidini, Gustavo

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781849800402

Section: Chapter 8

Section Title: Patent Governance in the United States: Lessons from Bilski v. Kappos

Author(s): Thomas, John R.

Number of pages: 26

Extract:

8. Patent governance in the United
States: lessons from Bilski v. Kappos
John R. Thomas

INTRODUCTION

On the final day of its October 2009 term, the U.S. Supreme Court issued
its eagerly awaited decision in Bilski v. Kappos.1 The patent bar's patience
would not be rewarded. Those who urged the Court to overturn the lower
court decision were disappointed, as all nine Justices agreed that Bilski's
claimed commodities trading risk-hedging method did not comprise
patentable subject matter. Yet the Court also frustrated observers who,
based upon the tone of its earlier opinions and its questions during oral
argument, had come to believe that business methods would be declared
unpatentable. Rather, the Court opted `to leave open the possibility of
some business method patents' even as it dismissed the `broad patent-
ability of such claimed inventions'.2 Bilski quickly took its place within a
line of recent Supreme Court opinions that readily set aside the rulings of
lower courts but provide scant concrete guidance in their place.
Bilski casts significant doubt upon the increasingly popular view that
judicial decisions provide the best mechanism for achieving patent reform
in the United States. For of late developments in U.S. patent law have
often followed an unusual two-step procedure. First comes the airing of
considerable industry concerns during a hearing before the Congress. The
next step comes from an entirely different branch of government: a judicial
opinion that endeavors to address those concerns. To many observers,
including ...