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The real standard articulated in Bilski and Alice



Peter Leung, Washington DC


In a session at the AIPLA Annual Meeting yesterday morning, David Wille of Baker Botts examined the Bilski and Alice rulings and suggested that despite the criticisms, the Supreme Court is laying out an alternative approach to the question of patentability

Wille pointed out that one of the major criticisms of the Alice decision was the ruling that abstract idea and performing it on a computer was “not ‘enough’ [sic]” to transform it into a patentable invention but, the decision did not give guidance as to what is considered enough.

Under this test, there is now a spectrum of potentially patentable business method-related subject matter, with technological inventions being mostly patentable. The tough questions, Wille noted, instead lay with computer implemented business methods.

While some observers suggest that the Supreme Court was essentially advocating a “technological arts” test, Wille argued that the Supreme Court had another concerns in mind.

“They importantly emphasized that just because an invention involves an abstract concept, it does not mean that it’s not statutory subject matter, he said. “In fact they went further: they stated that what they were concerned about is tying up the building blocks of human ingenuity.”

Wille noted that the Court in Alice reiterated this idea in several ways, such as references to fundamental business practices.

In light of this, he argued, the lesson may be that the Supreme Court is worried, not so much about how to properly define what constitutes an abstract idea or whether something goes beyond that abstract idea enough to constitute an invention, but rather which abstract ideas are patentable and which ones are not. Namely, those that cover the building blocks of human ingenuity or fundamental business practices.

This test appears to explain the Supreme Court’s rulings in Alice and Bilski, and the PTAB may also be taking this approach. Wille pointed to the PNC Bank case involving a patent for a system that analyzes data and places seals of authenticity on websites. While the PTAB instituted covered business review on other grounds, it rejected a request to do so on Section 101 grounds, finding that the claim was not directed to an abstract concept and that putting the authenticity seal on a website or document was not a fundamental business activity or a building block of the modern economy.

“There’s a suggestion, then, that maybe the line should be drawn looking at whether or not the abstract concept is a fundamental building block,” Wille explained.


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