Statutory Subject Matter in Context: Lessons in Patent Governance from Bilski v. Kappos

Intellectual Property and Patents

Article Snapshot


John R. Thomas


Lewis & Clark Law Review, Vol. 15, No. 1, p. 133, 2011


This article looks at the value of judicial intervention in reforming patent law.

Policy Relevance

As policy makers continue to debate patent reform, the extent to which the judicial branch can intervene is important as both a safety net in case of legislative inaction and as an incentive to act in order to guide the judiciary.

Main Points

  • Patent reform has long been discussed, debated, and delayed by Congress. However, the fast developing pace of technology demands that the law keep up with developing patents and patent issues.
  • In the absence of legislative action, the Supreme Court has often stepped up to provide and define the necessary law. In many instances, the very issues that Congress has discussed and been unable to resolve have then been taken up by the court.
  • The Supreme Court, as well as the federal Court of Appeals, has addressed a number of issues that they felt were necessary to protect patent rights.

    • In 2006, the Supreme Court created a new four-step system determining when the court could grant an order stopping patent infringement.
    • In 2007, the federal appellate court made it easier to grant excess damages.
    • In 2008, the appeals court changed the laws addressing where patent lawsuits can be brought geographically.
    • The court also addressed how to assess the financial value of a patent claim in 2009.
  • The patent community considered much of the court’s intervention both positive and necessary. However, as the trend of judicial activity in patents continued, the court’s decision became less clear.
  • In Bilski v. Kappos, the Supreme Court attempted to limit what types of things could be patented, but gave little guidance as to what limits they were actually imposing. In this case, the court said that Bilski’s invention was not patentable because it was abstract, which is a difficult term to define and apply to other cases.
  • While the court has provided valuable and necessary changes to patent law in the last ten years, the increasing breadth and complexity of the necessary reforms suggests that Congress needs to take action.  Congress possesses better research capacity and is better equipped to issue detailed guidelines that can be followed going forward.

Get The Article

Find the full article online

Search for Full Article