JUSTICE SCALIA: You know, you mention that
there are all these -- these new areas that didn't exist
in the past because of modern business and what-not, but
there are also areas that existed in the past that don't
exist today. Let's take training horses. Don't you
think that -- that some people, horse whisperers or
others, had some, you know, some insights into the best
way to train horses? And that should have been
patentable on your theory.
MR. JAKES: They might have, yes.
JUSTICE SCALIA: Well, why didn't anybody
patent those things?
MR. JAKES: I think our economy was based on
JUSTICE SCALIA: It was based on horses, for
Pete's sake. You -- I would really have thought
somebody would have patented that.
MR. JAKES: There are also issues with
enforcement. I can't really answer why somebody
Someone on patently-o included the comment:
METHODS OF TRAINING HORSES
US Pat. 3099248 - Filed Jan 25, 1962
In the method of training horses of claim 1 the recording of vocal sounds and
noise made by spectators at race tracks during the running of horse races and
Animal training method and apparatus
US Pat. 5566645 - Filed Aug 1, 1994
This lengthy 65 training period is mostly due to the current time delay between
training rewards and the horse's desired behavior. ANIMAL TRAINING METHOD ...
One suspects that there are "business method" patents of sorts long before 1962.
The preparation for Bilski was less than sterling.
**Outside the US, note
ANIMAL TRAINING APPARATUS AND ASSOCIATED METHOD, WO/2008/077190, for which the Australian Patent Office found 3 pieces of prior art denoted "X" in the ISR.
**Of the comment below, note that the interchange between Justice Scalia and Mr. Jakes
does not establish whether there were, or were not, patent claims to methods of training horses, during
the "horse period" of our economy, which arguably was gone as the "steam engine period" advanced.
But this interchange is really beside the point, because as one justice noted in Lessig's copyright case
during oral argument, the Constitution gives Congress the ball on copyrights (and patents). Congress
could decide "no patents," and what may have existed in 1790 is irrelevant. The fact that Congress
enunciated a defense to "business method" patents would suggest that Congress approves their
existence, at least as some level.