Tuesday, November 10, 2009

Justice Sotomayor in Bilski

An interchange in Bilski oral arguments:

MR. JAKES: That’s right. But they have also defined “technology” in such a way as to exclude business methods. And I don’t think we can do that.

The fields of operations research, industrial engineering, even financial engineering, there has been an explosion in these particular fields, and to now call them non-technological because they didn’t exist over 100 years ago wouldn’t make -

JUSTICE SOTOMAYOR: Are you suggesting they didn’t exist because we didn’t give them patents 100 years ago?


JUSTICE SOTOMAYOR: Or they exist because computers have increased – current economy and state of technology, with computers and the Internet and the free flow of information. But that’s what -

JUSTICE SOTOMAYOR: But a patent limits the free flow of information. It requires licensing fees and other steps, legal steps. So you can’t argue that your definition is improving the free flow of information.

MR. JAKES: Your Honor, I would, because of the disclosure requirement of the patent laws. It requires people to disclose their inventions rather than keeping them secret, so there is a second benefit to the patent system just other than encouraging people to invent, and that is to have that information get to the public generally. And in exchange for that -

IPBiz notes they call them "patents" [as distinct from "latents"] for a reason. [See also 8 JMRIPL 80, 83: The primary benefit to the public of the patent system is the public disclosure of useful information.33 In the case of the invention of the transistor, Bell Labs scientists promptly and accurately disclosed their information, both through patenting and through scientific publication, so that other scientists could build upon their work.]

From the PatentHawk blog:

New face on the bench, Justice Sonia Sotomayo [sic] took a long view, worrying out loud that the machine-or-transformation test could foreclose patenting of technologies not yet imagined. Sotomayo's ex-husband is patent maven and blogger Kevin Noonan. "Once you announce an exclusive test, you're shoe-horning technologies that might be different. So help us with a test that doesn't go to the extreme the Federal Circuit did, which is to preclude any other items, something we held open explicitly in two other cases, so we would have to backtrack and say now we are ruling that we were wrong, and still get at something like this."

See also

Sotomayor on IP

***UPDATE. Compare what is published in 8 JMRIPL 80, 83 [above] to the post by John Sulston titled
How science is shackled by intellectual property which begins:

The idea of ownership is ubiquitous. Title deeds establish and protect ownership of our houses, while security of property is as important to the proprietors of Tesco and Sainsbury's as it is to their customers. However, there is a profound problem when it comes to so-called intellectual property (IP) – which requires a strong lead from government, and for which independent advice has never been more urgently required. The David Nutt affair has illustrated very well the importance of objective analysis of complex social issues.

The myth is that IP rights are as important as our rights in castles, cars and corn oil.


This is of particular concern in the developing world, where drugs that are routinely available in high-income countries are unaffordable or inaccessible, and treatments for diseases of the poor are simply not being developed due to lack of a viable market. Existing inequities in knowledge capital make developing nations hostage to more technologically advanced countries for their basic health and development needs, and restrict the participation in research that would allow them to redress this imbalance.

For science to continue to flourish, it is necessary that the knowledge it generates be made freely and widely available. IP rights have the tendency to stifle access to knowledge and the free exchange of ideas that is essential to science. So, far from stimulating innovation and the dissemination of the benefits of science, IP all too often hampers scientific progress and restricts access to its products.

A Steady Rise, Punctuated by Doubts


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