2009 Issue

18 a purely mental process of performing requisite mathematical calculations without the aid of a computer or any other device, mentally identifying those transactions that the calculations have revealedwouldhedgeeachother’s risks, andperforming the post-solution stepof consummating those transactions.” 14 So, the Bilski majority found claim 1 unpatentable. The three Bilski dissenting opinions, of course, head in different directions from the majority. Judge Newman’s opinion emphasizes the enormous un- certainty generated by the majority’s new test. For example, with regard to the State Street Bank decision, the core holding allowing business method patents survives 15 , but the narrower result that served to exclude the mutual funds pooling invention of State Street Bank from the mathematical algo- rithm limitation is now gone 16 . Bilski , of course, casts doubt on the current patentability of the mutual funds invention in State Street Bank . Judge Newman suggests that it would be unpatentable, as she finds it difficult to distinguish the invention there from that presented in Bilski 17 . Newman also suggests that the court’s new approach puts at risk a broad range of “computer-implemented and information-based” inventions 18 . Newman is also concerned about the overall effect of themajority opinion on innovation: “Although this uncertainty may invite some to try their luck in court, the wider effect will be a disincentive to innovation-based commerce. For inventors, investors, competitors, and the public, the most grievous consequence is the effect on inventions not made or not developed because of uncertainty as to patent protection.” 19 JudgeMayer’s dissenting opinion joins the patent systemcritics: “The pat- ent systemhas run amok” 20 . Mayer states that “the patent system is intended to protect and promote advances in science and technology, not ideas about how to structure commercial transactions.” 21 Mayer further states that State Street Bank has allowed “exclusive ownership of subject matter that right- fully belongs in the public domain.” 22 Judge Mayer leaves no doubt about what he would have done: “the time is ripe to repudiate State Street and to recalibrate the standards for patent eligibility, thereby ensuring that the patent system can fulfill its constitutional mandate to protect and promote truly useful innovations in science and technology.” 23 Finally, Judge Rader believes Bilski should have been resolved on simpler and narrower grounds: “because Bilski claims merely an abstract idea, this court affirms the Board’s rejection.” 24 Clearly, there are many unanswered HISTORY OF American Council of Engineering Companies — continued from page 16 14 Id. at 31. 15 Id. at 21. 16 Id. at 20 n.19. 17 Newman op., p. 35. 18 Id. at 29. 19 Id. at 36. 20 Mayer op., p. 24. 21 Id. at 1. 22 Id. at 20. 23 Id. at 25. 24 Rader op., p. 1. found that it occupied a position of prominence in both the national and international arenas. As the United States edged into the dawn of its third century, there to confront the challenges of a new technological age, ACEC stood at the ready, poised to deal with the needs of a civilization growing increasingly complex. One hundred years has passed since the original organization formu- lated a policy that would make it a Power in the community, in matters on which its membership is qualified to authoritatively speak. Today the American Council of Engineering Companies (ACEC) is the national organization concerned exclusively with serving the business interests of engineers in independent private practice. ACEC represents 5,700 firms throughout the country engaged in a wide range of engineering works that propel the nation’s economy, and enhance and safeguard America’s quality of life. A political presence in all 50 states and the nation’s capitol and a national PAC that ranks in the top one percent in Washington D.C. has completed the initial desire of the founders to be the Voice of the Engineering Industry. Once again the profession appears at times to be under siege from a numerous directions, the country’s infrastructure is in need of repair and upgrade and the economy is mired in a global recession. From its earliest days, the members of the American Council of Engineering Companies and its predecessor organizations have stood at the ready where the questions in the Bilski majority decision. Judge Rader enumerates just a few: “What formor amount of ‘transformation’ suffices?When is a ‘representative’ of a physical object sufficiently linked to that object to satisfy the transforma- tion test? (e.g., Does only vital sign data taken directly from a patient qualify, or can population data derived in part from statistics and extrapolation be used?) What link to a machine is sufficient to invoke the ‘or machine’ prong? Are the ‘specific’ machines of Benson required, or can a general purpose computer qualify?What constitutes ‘extra-solution activity?’ If a process may meet eligibility muster as a ‘machine,’ why does the Act ‘require’ a machine link for a ‘process’ to show eligibility?” It is also possible that the Supreme Court may decide to toss out the result of Bilski and the Federal Circuit is keenly aware of that possibility. But for now, we are stuck with the Bilski majority decision. Thus, we have a new (old) test for the patentability of processes generally: A process must be tied to machines or transform something. Additionally, we do know that adding a “field of use limitation” in an otherwise unpatentable process claim is not enough. It would also appear that “insignificant postsolution activity will not transforman unpatentable principle into a patentable process.” In summary, it appears that obtaining a patent is becoming harder and harder. Inventors will have to continue to rely on the expertise and cleverness of their patent counsel to draft process claims that clear new hurdles for patentability if they want patent protection for their inventions. Mr. Oestreich is a registered patent attorney and partner at the intellectual property law firm of Morriss O’Bryant Compagni. BILSKI — continued from page 17 nation’s interests and thewell being of the public have been at stake. They have designed vast public works projects that helped America weather the Great Depression; took part in the massive effort required to build a devastating war machine in the forties; designed the schools, hospitals, neighborhoods and office buildings needed of a burgeoning population during the post-war era, as well as themost sophisticated transportation network to allow people to reach them. They met head-on the crises of the environment and the energy shortage developed the technology to cleanse the nation’s water and air and they now are prepared to rebuild the earlier works that time has eroded. As we embark on our second century the American Council of Engi- neering Companies is dedicated to giving a single, powerful voice to the consulting engineering profession in order to identify the problems confronting the industry and propose workable solutions for the future. It can be trusted that the consulting engineers, those who design civili- zation, will welcome each crisis of the present as a challenge to create a new and better future. Mr. Smith is the executive director of American Council of Engineering Companies, Utah. The article was condensed and compiled for publication fromEngineering the Future and A History of the American Consulting Engineers Council, publications of ACEC and the Consulting Engineers Council respectively.