June 16, 2010: 30th Anniversary of Diamond v. Chakrabarty

Ananda M. Chakrabarty

On June 16, 1980, 30 years ago today, the United States Supreme Court issued its landmark patentable subject matter decision in the case of Diamond v. Chakrabarty, which held that living matter is patentable subject matter if it is created by man. This decision revolutionized the biotechnology industry in the United States, and since has been the basis of much scorn, held up to ridicule by those who feel that living matter should not be patentable as a matter of policy.  Chakrabarty was quite clearly the turning point for the biotech industry and that is emblematic of the need for an expansive view of what is patentable subject matter.

There is some irony that on the day we mark the 30th anniversary of the decision that launched the modern biotechnology industry we are still awaiting a decision on a patentable subject matter case — Bilski v. Kappos.  Bilski has the potential to not only kill business methods, but also the software industry, the biotechnology industry and much of the medical innovation we see growing by leaps and bounds.  So for today I toast the Supreme Court decision that launched the biotech industry, created millions of jobs and has lead to innumerable cures and treatments.  I just hope that tomorrow (or whenever the Supreme Court issues its Bilski decision) it is not all for naught.

Earlier today Biotechnology Industry Organization President and CEO Jim Greenwood put into perspective the importance of Chakrabarty, saying:

The Supreme Court’s decision in Diamond v. Chakrabarty thirty years ago today was instrumental in spurring the creation of a dynamic and flourishing biotech industry. By finding that subject matter derived from nature is eligible for patenting if it is modified by man into something new, useful and unobvious, the Court provided assurance to biotech companies and their investors that emerging technologies are protected by the patent system even if they could not have been foreseen when the system was created 200 years earlier.

Since the Court’s decision, the biotechnology industry in the United States has improved and saved lives around the world through breakthrough medical therapies, increased crop yields, and renewable fuels. Our industry is a key component of the nation’s innovation economy, supporting more than 7.5 million jobs throughout the country and providing the United States with a global competitive advantage.

Could you imagine what the US economy would look like without the biotechnology industry?  Those 7.5 million jobs are roughly equivalent to the number of jobs the United States has lost since the start of this Great Recession.  Without them it is hard to imagine what state the United States would be in from an economic and national security standpoint.

Ananda M. Chakrabarty is current a Distinguished Professor in the Department of Microbiology and Immunology in the University of Illinois at Chicago College of Medicine. Back in the late 1970s he was a scientist working for General Electric. As a result of his work as a microbiologist for GE he filed a patent application on an invention relating to a bacterium from the genus Pseudomonas containing therein at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway.  If that is going over your head, no worries.  Suffice it to say that in layman’s terms the invention was a man-made, genetically engineered bacterium capable of breaking down multiple components of crude oil.  This man-made, genetically engineered bacterium possessed specialized characteristics not found in any naturally occurring bacteria, and it was believed that the invention might be useful for the treatment of oil spills, a matter of great importance at the moment.

Unfortunately, the Chakrabarty bacterium was unstable and after several generations the ability to bread down oil was greatly reduced. In patent terms, however, the invention was new, nonobvious and useful because it worked, although not as well ultimately as hoped. So the question was whether it was patentable subject matter. Said another way, would US laws allow for Chakrabarty’s invention to receive a patent even if it were described adequately, was proved to be new, was proved to be non-obvious and useful.

In Chakrabarty the Supreme Court noted that the United States Congress chose expansive terms such as “manufacture” and “composition of matter,” modified by the comprehensive “any,” in the patentable subject matter law, 35 USC 101, which says:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Furthermore, it was noted, as has been the case in every patentable subject matter decision, that the Legislative History to the 1952 Patent Act explained that it was the intent of Congress to allow patents on “anything under the sun that is made by man.”  As a result of the expansive view of patentability demanded by Congress the Supreme Court had little difficulty finding the Chakrabarty innovation to be patentable subject matter.

Certainly an expansive view of what should be patentable subject matter, and one that has consistently lead the United States to allow patents for revolutionary innovations that could never have been contemplated by the Founding Fathers, Congress or anyone for that matter.  In fact, it is this expansive view of patentable subject matter that has kept the U.S. on the cutting edge of innovation.

The Bilski case deals with what should be an easy case.  The inventor looked, thought and acted.  There was nothing tied to any physical apparatus, just a purely mental business method.  But rather than limit the decision to the facts of the case the Federal Circuit decided to take the occasion to issue a sweeping decision that called into question the patentability of all methods, particularly software and biotechnology methods.  Luckily, the United States Patent and Trademark Office has not interpreted Bilski as broadly as even the express terms of the decision require, so for now patents are still issuing, but a misguided Supreme Court decision continues to be a worrisome fear.

As Judge Newman pointed out in her Bilski dissent: “It is antithetical to this incentive to restrict eligibility for patenting to what has been done in the past, and to foreclose what might be done in the future.”  Indeed, the real fear posed by narrow-minded interpretations of what qualifies as patentable subject matter is not what we know to be cut off, but rather what we don’t know will be cut off.  Had the Supreme Court decided Chakrabarty the other way it is reasonable to assume the biotech industry would never have flourished.  Without patents it would have been starved of funding, medical advances would not have occurred and the high paying technology jobs the industry created would not have existed.

I hope the Supreme Court is paying attention to this 30th anniversary of Chakrabarty.


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Join the Discussion

44 comments so far.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 22, 2010 12:38 pm


    Only the Myriad case deserves or requires judicial review. The Chakrabarty case was a decision issued by the United States Supreme Court, making it the supreme law of the land. Judge Sweet, who is the district court judge who issued the ruling in Myriad, regrettably chose to ignore extremely clear precedent. So there is no contradiction. Judge Sweet was clearly wrong and the Federal Circuit will reverse him in due course.


  • [Avatar for K.M.Senthil Kumar]
    K.M.Senthil Kumar
    June 22, 2010 12:18 am

    Patentability in Biotechnology presents contradictory court judgements. In Diamond vs Chakraborthy case, gene manipulation was held to be a statutory subject matter. However, in Myriad vs USPTO, it was held that the isoalted DNA is nothing but physical emobodiment of genetic information and hence represents purified chemical compound and hence becomes non-statutory subject matter. Since, these cases present a contradictory view with respect to the Biotech cases, both of these judgements deserve judicial review.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 18, 2010 11:11 am


    Your company is using its patents wisely indeed, and that is the primary reason to have patents in the software space.

    There are a growing number of contingency based patent litigators. One who advertises on IPWatchdog is Tara Williams. Once it was impossible to find contingency representation for patent matters, but not any more. There are options available.

    I think the strategy of sending out a number of C&Ds is not the right one to pursue. First you could get hauled into a DJ action (perhaps unlikely) but it casts the net too wide. A successful strategy is to pick a target and win. You don’t shoot for the big players initially. You pick off the lower hanging fruit. Not so small that no one will notice, but they need to be small enough not to want to fight and big enough to be known and most importantly to pay a royalty and take a license. You do this in series a few times, build up a war chest of funds, then you go after the bigger players. So you really need to think of this as a war with many battles, or perhaps an analogy might be a boxer. You don’t start out fighting for the heavyweight championship, you get in wins with bad opponents, then slowly increase the competition level until you are ready.

    I think this would make a good article. Look for it moving forward on IPWatchdog.

    Hope this helps.


  • [Avatar for JD]
    June 18, 2010 08:33 am

    Gene wrote: “I’m not sure this would be a good measure though. What happens is that big companies are unable to bully those who have patents themselves, so the primary reason for small tech businesses to get patents is twofold: (1) attract investors; and (2) scare away competitors. If you don’t have any patents you are a target, if you have patents then you can counter sue.”

    As much as I hate to pull away from the current argument, I was curious about the above statement. I work for a small tech company, and while we have a small but growing patent portfolio, I’ve found that we’re easily bullied by the big companies. After obtaining our first granted patents, we sent around a number of C&Ds to the big boys who happened to be infringing, which were largely met with laughter and counterthreats. We didn’t pursue the issue any further simply because spending years in litigation (like i4i) was just too costly; the big tech players have multi-million-dollar litigation budgets and large stables of lawyers thirsty for blood.

    Our patent portfolio *is* largely used for the two reasons above — attracting money and defending ourselves against competitors at the same level — but large-scale multinationals simply have enough cash and paper to bury us if they felt like walking over our patent rights.

    Which brings me to my question: has it largely been your experience that small shops stand up against big ones? It seems counterintuitive to me, as a sufficiently large company can simply bleed a smaller one dry by throwing money into the problem until they go away or fall over.


  • [Avatar for IANAE]
    June 17, 2010 04:31 pm

    “Then you’re advocating socialism? Sounds like it to me. A true libertarian doesn’t believe in patents. ”

    The Constitution provides for patents. Do true libertarians believe in the Constitution?

    For that matter, do true libertarians believe that anybody is entitled to be anything other than a true libertarian?

    “Patent rights and real property rights cannot coexist.”

    Patent rights are more likely to interfere with personal property rights than real property rights, but even those two have been happily coexisting for centuries. Patent rights are designed to move money around, because inventors making profit is how patents promote the useful arts.

    “Their monopoly denies me the choice of organic seeds or even non-gmo seeds.”

    You mean you’re denied the choice of organic seeds or non-GMO seeds because nobody else has chosen to supply them? I’m pretty sure Monsanto doesn’t have patents on organic or non-GMO seeds, because those presumably exist in nature.

    Gene: “That is not a libertarian position, it is the position of an anarchist. ”

    Technically, an anarchist wouldn’t be in favor of property rights either. Property rights without government backing are limited to whatever you can physically defend against any comers.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 17, 2010 04:16 pm

    Scott says: “Patent rights and real property rights cannot coexist.”

    That is not a libertarian position, it is the position of an anarchist. No laws because they all in some way violate real property rights is not Libertarian, it is just paranoid.


  • [Avatar for Gene Quinn]
    Gene Quinn
    June 17, 2010 04:13 pm


    I hope you realize your characterization of Monsanto is counter factual and does nothing more than perpetuate myths that have been proven wrong.

    Rather than read Internet accounts of cases you really should try reading the cases themselves. They are good reading, and quite clearly demonstrate that those pushing an agenda have not only exaggerated, but have completely made up the story about Monsanto persecuting farmers.


  • [Avatar for Scott Dunn]
    Scott Dunn
    June 17, 2010 03:06 pm

    Monsanto is a government protected monopoly with 90% of the seed market. Their monopoly denies me the choice of organic seeds or even non-gmo seeds. And only time will tell how much damage their seeds will do to Earth.

    Funny how Monsanto doesn’t want GMO foods to be labeled, but they sure love that patent rent money. They want the benefits but not the liabilities.

    Say, doesn’t that sound like socialism? A true libertarian would never stand for this.

  • [Avatar for Scott Dunn]
    Scott Dunn
    June 17, 2010 02:51 pm


    Then you’re advocating socialism? Sounds like it to me. A true libertarian doesn’t believe in patents. Just go here to find out more: http://www.againstmonopoly.org. Patent rights and real property rights cannot coexist.

  • [Avatar for IANAE]
    June 17, 2010 02:46 pm

    “I hope that Supreme Court is noticing how Monsanto has monopolized the seed market and how they terrorize farmers to prevent the same from collecting seeds after the harvest. Now THAT’s discouraging innovation.”

    I think you’ve got it wrong. Monsanto IS the innovation. Collecting seeds after the harvest is not innovation.

    “Patents allow a patent holder to tell others what they can do with their property, a clear violation of property rights.”

    That’s not a bug, it’s a feature. The patent on your product is someone else’s property right.

  • [Avatar for Scott Dunn]
    Scott Dunn
    June 17, 2010 02:43 pm

    I hope that Supreme Court is noticing how Monsanto has monopolized the seed market and how they terrorize farmers to prevent the same from collecting seeds after the harvest. Now THAT’s discouraging innovation.

    That crazy rent seeking is evidence of the evils of patent abuse. Patents allow a patent holder to tell others what they can do with their property, a clear violation of property rights.

  • [Avatar for IANAE]
    June 17, 2010 01:51 pm

    “If pure ideas become patentable, these two will come into conflict and that will be a huge problem.”

    I don’t see the conflict. If you want to “speak” by making an exact copy of a car, you’ll be infringing someone else’s design patent and you will have a very hard time defending that charge in court on constitutional grounds. Same for trademarks, which are even more speech-like and not specifically provided for in the Constitution. The exclusive right in a patent is clearly a constitutional limit on free speech, because the Constitution empowers Congress to grant it.

    Also, equating software to “pure ideas” is tenuous at best.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 17, 2010 01:41 pm

    N Owens-

    So the originality that Chakrabarty was the first to come up with was taken from the work of others. Do you actually say these things in your head before you type them? Perhaps you should read them out loud to yourself. Look at what you wrote.

    Of course Chakrabarty built upon the work of those who came before him, and he contributed novel and nonobvious things that no one before him came up with. His rights extend to what he contributes that is original.

    By the way, stop using the word “idea.” The idea of a time machine that allows an individual to travel through time is also not new, but the first time one works it will be patentable. So save your “the idea of oil-eating bacteria isn’t new.” On top of that the critical time was back in the 1970s, not whether it is new today. Further still, the FACTS (yes those things do matter) demonstrated that no bacteria possessed the characteristics and properties of the Chakrabarty man-made bacteria. So you can try and twist all you want, but ignoring the truth and making up facts is not going to work here, or help you win the debate, which you are losing very badly by the way.


  • [Avatar for N Owens]
    N Owens
    June 17, 2010 01:37 pm

    IANAE, you should be very wary of patent issues bumping into 1st Amendment rights. If pure ideas become patentable, these two will come into conflict and that will be a huge problem.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 17, 2010 01:36 pm

    N Owens-

    1. Object all you want, but the “borrowing of ideas” is stealing. The fact that you don’t like that or understand that speaks volumes.

    2. You expose your myopia when you say there is “nothing new under the sun.” That is the same close-minded thing that has been said over and over again throughout history. It has always been wrong, and it always will be wrong. Just over the last several weeks there have been biotechnology breakthroughs relating to cancer, including a breast cancer vaccine that works to 100% efficiency in mice. Now there is a long way to go, but that is extraordinarily promising and it is NEW and it is UNDER THE SUN. Wake up!

    3. You say: “Copyright protects specific bits of code which implement ideas and that is enough for most software developers.” First, copyright does not protect bits of code, copyright protects expression, so even if your software is copyrighted I can take and copy bits and pieces of it without you having any remedy whatsoever. Second, copyright does not protect implementation of ideas. Copyrights do not protect functionality, so I can make a software program that does EXACTLY what yours does and you could never stop me with your measly copyright. Copyrights are not enough for developers, developers are just so ignorant that they think it is enough. Copyrights cost $45 in the US, and you get about what you pay for. In truth, the right is worth more than $45, but not much, so it is a wise investment. But if you think you are going to build a business on software copyrights alone you are sadly mistaken, and you will realize I am correct only after it is too late for you to do anything about it and you have lost everything. I am normally not an “I told you so” kind of guy, but I will make an exception in your case.

    4. You argue that if something is implementable on paper it shouldn’t be patentable, which is absurd. A computer using appropriate software can handle tasks in seconds (or less) that would take years to do by hand. You know it, and your argument is hardly original. It is wrong regardless of who says it, and shows that you really are not very sophisticated and you don’t understand computer technologies. Go ahead and get working by hand, the rest of us will use software. LOL.


  • [Avatar for IANAE]
    June 17, 2010 01:33 pm

    “If we use others’ ideas, are we thieves? Most definitively not.”

    What if they have an exclusive legal right to that particular use of those ideas? Most definitely yes.

    “Any software developer will tell you that 14 years is an extremely longtime in IT.”

    Yes, those design patents are really stifling in IT. Or do you mean the 14 years it will soon take to get an IT patent examined?

    Patents last a long time in every industry. That’s not a bug, it’s a feature. The patentee is supposed to have an opportunity to turn a decent profit from his patent, which might include seeking royalties from other parties (which presumably isn’t quite what you mean by “patent trolling”).

    I guess someone needs to explain to me why the software industry deserves different treatment from any other industry. Sure, they’d rather just produce whatever they want without having to worry about other people’s patents, but you could say the same for the guys who design drugs or cars or iPods.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 17, 2010 01:26 pm


    You ask: “As for those “mega giant proprietary competitors”, aren’t they basically the ones getting all the patents anyways?”

    Answer: NO. If you look at the patent portfolios of the mega giants their patents are usually not very well written. In fact, even though
    these innovations can be patented if drafted properly under Bilski, many of the mega giants have lost enormous portions of their patent portfolio as a result of the CAFC Bilski decision. Perhaps Microsoft was the biggest loser. The mega giants get numbers, poor quality and most are not terribly afraid of their portfolios, at least if they have their own portfolio.

    You say: “The average guy can’t just throw $10,000 into getting a patent.”

    Response: You would be surprised. There are plenty of inventors, particularly in the software and computer technology space, that pay far more than that just to get a patent application on file. So the average player in this space who is serious about going into business can and does pay. They also get much higher quality patents, which is why the mega giants want to prevent these patents. Don’t fool yourself. The mega giants of today were the small companies of the past and they know how they reached the pinnacle. Their efforts are to make it difficult or impossible for others to grow from small to mega giant to supplant them. So they seek to water down the patent system.

    Let me ask you this… based on your comments I sense that you are not a fan of the mega giants, like Microsoft, correct? When exactly was the last time you agreed with a position taken by Microsoft? Aren’t you always suspicious about Microsoft and their motives?

    So why then do you leap to their position in the patent debate without smelling a rat?


  • [Avatar for N Owens]
    N Owens
    June 17, 2010 01:20 pm

    How about the “use” of others ideas. If we use others’ ideas, are we thieves? Most definitively not.

    Chakrabarty’s innovation was perhaps his method of genetic cross-linking. But, again, where did that idea come from? He built on the work of others. Chakrabarty could therefore be a thief, if we use the current IP definition. The idea of oil-eating bacteria isn’t new. Nature probably invented it long before humans walked the planet. In short, Chakrabarty took his idea from the commons.

    “The purpose of the patent system is securing for limited times to inventors the exclusive right to their respective discoveries.”

    Any software developer will tell you that 14 years is an extremely longtime in IT. In point of fact, it is so long that it stifles countless innovations and encourages patent trolliing–something we should all despise.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 17, 2010 01:20 pm


    What exactly is the weather like in your universe?

    Since you seem to have it all figured out would you mind explaining who exactly would come up with the cures? What benevolent billionaire would spend the $500 million to $1 billion necessary to discover, commercialize, go through the FDA process (which is extremely onerous and costly)? You live in a fantasy world if you think that anyone would fund the creation of cures and treatments only to allow others to steal their work for free.


  • [Avatar for AJ]
    June 17, 2010 01:12 pm

    If biotechnology was not patentable then there would be no money incentive to withhold cures in order to fund the research into stopgap measures that allow the companies to infinitely fund themselves.

    Lives would be richer and more meaningful if Diamond v. Chakrabarty had gone the other way.

  • [Avatar for IANAE]
    June 17, 2010 01:05 pm

    “I object to your referring to the borrowing of ideas as theft.”

    When you borrow something, you get permission from the lender and you give it back when you’re finished. Theft is a completely different thing.

    “There is nothing new under the sun. ”

    Really? You’re saying that in a Chakrabarty thread? There are millions of patentably novel things under the sun, and that’s the only definition of “new” that matters.

    “Copyright protects specific bits of code which implement ideas and that is enough for most software developers.”

    No, it’s not. It’s often trivial for someone to produce a functional equivalent of your program without actually copying (or seeing) any of your code. If you want to actually protect your work, copyright is simply inadequate. Whether software should be patentable is a whole other question, but it’s pretty evident that copyright is not much protection at all.

    “The ideas themselves, which are often abstract and/or implementable either on paper or even in one’s head, shouldn’t be patentable. Doing so hinders progress, and that is antithetical to why we have a patent system.”

    Keeping other people from doing what you’ve invented is exactly why we have a patent system. The purpose of the patent system is securing for limited times to inventors the exclusive right to their respective discoveries. That doesn’t hinder progress in software any more than in other fields, except to the extent that overly broad claims are issuing in software.

  • [Avatar for N Owens]
    N Owens
    June 17, 2010 01:01 pm


    Why do you use “Mr.” ? I could be a woman for all you know. Perhaps I am.


  • [Avatar for N Owens]
    N Owens
    June 17, 2010 12:52 pm


    I object to your referring to the borrowing of ideas as theft. There is nothing new under the sun. Almost every “new idea” has a predecessor upon which it was modeled. Hence, under your terminology, we are all thieves. Copyright protects specific bits of code which implement ideas and that is enough for most software developers. The ideas themselves, which are often abstract and/or implementable either on paper or even in one’s head, shouldn’t be patentable. Doing so hinders progress, and that is antithetical to why we have a patent system. So let’s stop with the ad hominem, shall we? You know nothing about me and my motives and I know nothing about you. Let’s limit our conversation to ideas.

  • [Avatar for step back]
    step back
    June 17, 2010 12:26 pm


    I think we can all agree that 35 USC 101 is ambiguous as to what “the invention” is.
    The statute says:

    “Whoever invents or discovers any … may obtain a patent therefor

    The question remains as to whether that which the whoever “invents or discovers” is different from the ‘subject matter as a whole’ that is ultimately claimed?

    You, Gene, appear to take the position that we should stare deep into the eyes and heart of the inventor(s) and divine from such subjective probing what truly at its heart, “the invention” is.

    Others here (including me) take the position that the stuff that the whoever “invents or discovers” is the same as the subject matter as a whole that is ultimately claimed for purposes of determining subject matter eligibility.

    The Supreme Court can go either way on this underlying issue.
    Let’s flip a coin.

  • [Avatar for TINLA IANYL]
    June 17, 2010 10:52 am

    Mr. Owens,

    Clearly, you have no intellectual property expertise if you think copyright provides sufficient protection for software. In order to stop a competitor from stealing your idea, you have to prove that they actually copied your software, and did not simply write their own software that functions in the same way. But, I guess that’s what you want to be able to do, isn’t it?


  • [Avatar for rageon]
    June 17, 2010 10:12 am

    Can we get beyond this nothing that we wouldn’t innovate without patents. Are people more likely to get rich because they can patent their software/biotech-creation? Sure. But they won’t stop doing so. It’s a little dramatic to state that the entire industry wouldn’t exist wouldn’t biotech patents, isn’t it?

    As for those “mega giant proprietary competitors”, aren’t they basically the ones getting all the patents anyways? The average guy can’t just throw $10,000 into getting a patent. If we truly want a system where the true innovators are protected, then the patent system needs to be more accessible to those people.

  • [Avatar for Timothy McDonough, PhD]
    Timothy McDonough, PhD
    June 17, 2010 10:08 am

    The central point of the argument presented in my Bilski amicus brief is that more than 50% of economic activity in the US today is conducted in the services sector (as defined by the North American Industry Classification System, NAICS) and therefore it is more likely that consumers will encounter innovation in the services they buy than in the gadgets they acquire. The question before us as a society then becomes, shall we extend the doctrine of patent protection to the services sector in the 21st century as we have to the industrial, agriculture and extraction sectors in the 18th through 20th centuries? The logic for doing so for the former would be the same used for the latter: to provide incentive to inventors to disclose their innovative ideas. Above all, let us remind ourselves that patents have term limits. All patents eventually expire and the knowledge revealed by the patent process becomes public commons for all to exploit at will.

    On the point of patents leveling the playing field for the little guy, not having a Bilski decision has stifled innovation more than not. Case in point: I own a business method patent (7,373,320) for a futures market mechanism. In order to practice the invention we need several $million of capitalization to build out the physical and IT infrastructure, hire the staff, and obtain federal regulatory certification required to operate. In order to enter the industry that is dominated by behemoths like the Chicago Mercantile Exchange, New York Merc, ICE, etc., we need some “infant industry” type protection, a.k.a., patent protection. We have billionaire investors lined up to launch but none of them has been willing to sign a check since the Bilski en banc decision of the Federal Circuit in 2008 [545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008)]. We know that launch of an exchange to practice my invention will profoundly transform entire industries like airlines, health care, entertainment, etc. Thousands, if not millions of jobs will be saved and created in the decades to come as the result of the creation of this entirely new business space. But we can’t get a penny in funding without a patent, and we can’t bank on my patent until Bilski is settled. So we wait, and we wait, and we wait. And while we wait, whole industries flounder and stumble along with their archaic broken business models, jobs are lost or never created, and lives are ruined.

  • [Avatar for N Owens]
    N Owens
    June 17, 2010 09:44 am


    I do indeed know that some open source software is patented. Red Hat has many patents. They take out patents so that they have a patent portfolio large enough to keep the larger companies from destroying their business. They are also very generous in their licensing of those patents. But Red Hat is unique in that most developers of FOSS can’t afford to take out patents, let alone afford the legal fees to defend them. This ihow industry innovation is stifled.

    And, yes, I have problems with large corporations wielding enormous sums of money and power without any regard for society. Why do you think our economy is in the tank right now. Short term thinking by large corporations who only think about quarterly profits. This is indisputable.

    The software industry would do just fine with only copyright protection. FOSS certainly does okay with their use of copyright. If you have any doubts about that, you should check out the amount of software which is covered by the GPL.

    I doubt we are going to convince each other, but there can be little doubt that patents in this country are being grossly misused.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 17, 2010 09:40 am


    I don’t think I am doing that, although maybe.

    I have long held the position that a business method that merges something well known, like a reverse auction, should not be patentable simply because it utilized new communications technologies. There is no there, there and consequently no invention.

    I really don’t see what you are saying (not trying to be dense). Bilski is look, think and act. I see a problem with that. I think the State Street analysis is the right one, perhaps with some refinement.

    I have long been of the position that it is wrong to decide Bilski on patentable subject matter grounds. See:


    But if the Supremes are going to decide the case on patentable subject matter grounds then they should do what the CAFC should have done and limit the ruling to a mental process that embodies no unique physical steps, or something like that. Myself, I would prefer to say it is patentable subject matter but then analyze the looking, thinking and acting steps under 102, 103 and 112. I think Bilski would have a problem there.

    The CAFC decision bothers me for many reasons, chief among them is that I think what they were trying to say under 101 with the machine or transformation test is really best addressed under 112. Explain the invention with clarity and precision, and if you can’t then you obviously don’t have an invention. In sum: with mental processes the target seems like a moving one and that should violate 112 2d paragraph.


  • [Avatar for Gene Quinn]
    Gene Quinn
    June 17, 2010 09:30 am


    I suspect you could find this data from the Stanford patent litigation database.

    I’m not sure this would be a good measure though. What happens is that big companies are unable to bully those who have patents themselves, so the primary reason for small tech businesses to get patents is twofold: (1) attract investors; and (2) scare away competitors. If you don’t have any patents you are a target, if you have patents then you can counter sue.

    Those who say they don’t want software patents are naive to the extreme. They say they want open source to thrive. Open source is, however, widely patented. It is those massive open source patent portfolios that keeps Microsoft for launching a patent war. If open source didn’t have patents then Microsoft, and others, would use their dominant market position and cash resources to simply destroy the competition. They would copy whatever others were doing and since they control the distribution chains the small company wouldn’t be able to compete.


  • [Avatar for Gene Quinn]
    Gene Quinn
    June 17, 2010 09:25 am

    N Owens-

    Are you really this naive?

    You do realize that open source software is patented, right? You do realize those patents on the non-buggy software that you like are used to insulate them from challenge by the mega giant proprietary competitors that your comment implies you hate, right? You do realize that if software is not patentable then those mega giant proprietary competitors that you loathe will be able to simply copy the software of the open source, non-buggy creators and put them out of business?

    The outcome you desire is the one that you should least want. What they say about ignorance being bliss is certainly true for you!


  • [Avatar for N Owens]
    N Owens
    June 17, 2010 09:06 am

    Or uphold Bilski… Whatever your point of view…

  • [Avatar for N Owens]
    N Owens
    June 17, 2010 09:05 am


    If you like your software buggy, insecure, and expensive, by all means continue in your thinking that method patents that don’t transform matter are a good thing.

    I have no problems with non-obvious biotech patents that result in useful products, but let’s not take this too far. For example, the big biotech firms have often sought to extend the life of their monopolies by patenting the same drug in crystallized form, because this tends to make chemicals more stable and give them a longer shelf life. But this doesn’t meet the non-obvious test. Any freshmen chemistry major could tell you how obvious this is. Such patents also serves to keep beneficial drugs out of the hands of people who can’t afford them. As it stands the patent system is being used by large corporations to reap enormous and unjust profits, which are subsequently used to maintain their industry standing and stifle innovation. The crystallization patents are just one example, but there are others…

    Down with Bilski!

    N Owens

  • [Avatar for Tami]
    June 17, 2010 08:35 am

    Mr. Quinn,
    I took interest in whether the patents system is good or bad for small companies/start-ups. Some of the people who are against software patents (or patents generally) say that patents serve as a tool in the hands of big companies to block small companies. To me it seems the other way around- that patents give protection to small companies from being exploited by big companies. I think one way to prove this may be to check how many patent law suits are filed by small companies against big companies and vice versa. Of course, this method may be misleading because it doesn’t take into account pre-lawsuit letters which may lead to retreating of the weaker party. What do you think? Do you know where such data is available, or if anyone has checked this before?

  • [Avatar for Blind Dogma]
    Blind Dogma
    June 17, 2010 08:02 am


    re: your comment at 7:46 AM, isn’t patentability taken for the claim as a whole? It appears that you are parsing the claim and saying as whole the subject is not patent-eligible because some elements involve mental steps.

    Do you want a napkin to remove the Kool-aid stain from your lips?

  • [Avatar for Blind Dogma]
    Blind Dogma
    June 17, 2010 07:59 am

    The fear of being overwhelmed is tied to, or part of, the anti -patent mentality that is a product of being the watchdog of what deserves patent recognition and what does not. Saying “No” creates a feeling of power that itself becomes addicting.

    Having a “scarcity mentality” (e.g. the Office only has so many resources, so we must dissuade people from filing) is completely opposite of the mandate of the Office. I believe it was Step Back (or perhaps Just Visiting), that penned a superb entry awhile back at the Patent Hawk on the meaning of “promote” that should be kept firmly in mind. It is as if the Office is afraid of successfully fulfilling its mission and seeks to kill (or at least greatly stem) the flow of its customers using the system. Fear of the new is a poisonous cocktail for an agency that is supposed to be promoting the new.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 17, 2010 07:46 am


    Fair enough, but that us hardly unique and us a step that us well known and would not support patentability.

    The patentability, if any, in Bilski resides in the mental steps. So while I understand your point we will have to agree to disagree. The Bilski method is purely mental and the addition of a real world, well know step to a series of though steps doesn’t change my analysis.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 17, 2010 07:41 am

    N Owens-

    Your comment shows you know little about the biotech industry. That vast majority of companies are small, start-ups. They drive innovation and would not exist without patents because they couldn’t get funded.

    If you think large companies would see investing billions without the ability to obtain a competitive advantage through patents you are naive to the extreme.

    If it makes you feel better, or it is eaier to get up in the morning thinking what I said is absurd then by all means continue along with your ignorance.


  • [Avatar for EG]
    June 17, 2010 07:24 am


    To show you how bizarre the PTO was in the Chakrabarty case, they were willing to allow claims to the genetically engineered organism if it was in combination with a “carrier” (e.g., sawdust). The driving force behind the PTO resistance to the organism claims had nothing to do 35 USC 101 (that was the excuse), but because they feared (and rightly so) that they would be “flooded” with biotech applications they didn’t have the resources to handle. That was brought out in the Chakrabarty’s brief before SCOTUS.

  • [Avatar for step back]
    step back
    June 17, 2010 05:28 am


    Please stop confusing everybody with facts.

    When you initiate a series of transactions, you transform the states of people (compositions of matter) from one state (that of being part of the un-initiated) to a new one. But how does such a fact have any connection whatsoever to the Bilski case? 😉 Please stop confusing us with facts. We like our oatmeal mushy and mixed up thank you.

  • [Avatar for thomas ichim]
    thomas ichim
    June 17, 2010 01:47 am

    i agree 100%….hopefully you saw our Amicus Brief in Bilski (look up medistem)


  • [Avatar for N Owens]
    N Owens
    June 17, 2010 12:32 am

    The assumption you make that the the biotech industry wouldn’t exist without the ability to patent life is absurd. The biotech industry would certainly exist, perhaps not in the same form as it is today–dominated as it is by huge conglomerates that leverage their patent-derived money to negatively influence our society, economy, and politics–but it would certainly exist. The granting of statutory monopolies (i.e., patents) has done very little to foster ingenuity in recent decades. Anybody who understands cross-licensing in the software industry knows that the patent system only serves to exclude small start-ups that have good ideas. Software patents, which are the majority of patents issued these days, have done nothing but stifle progress. If you had your way, recipes for food would be soon be patentable. Why not? Recipes transform matter, oftentimes in non-obvious and useful ways (e.g., the rice powder and salt drink given to people who have dysentery to keep them from dying of dehydration). Should I be held liable for damages because I concocted a delicious new beverage to help a child wash down some unpalatable medicine, because it infringes on an idiotic patent taken out by some manufacturer of a weight-loss drink? Hardly. But that is where we will be going if Bilski is not upheld. In short, your assertion that it is an “expansive view of patentable subject matter that has kept the U.S. on the cutting edge of innovation” lacks both foundation and credibility.

  • [Avatar for Kip]
    June 16, 2010 11:21 pm


    I don’t think it’s fair to say that Bilski’s method is purely mental. The claim recites e.g. “initiating a series of sales or options transactions between the broker and producer-sellers” – I don’t see how an infringer could do that only in his/her head.

  • [Avatar for step back]
    step back
    June 16, 2010 09:31 pm


    Interesting catch.

    Will tomorrow, 6-17-2010 be a day that lives in patent law infamy?

    The sun will rise tomorrow and we may very well be betting our bottom dollars as Annie says.