Reinventing Patent Law

Steve Seidenberg writes in the February 2008 print issue of the ABA Journal that "the pendulum is swinging for a system that has long favored the rights of patent holders."  The following is excerpted from his article:

Stephen Comiskey thought he knew a good thing when he saw it. And plenty of others felt the same way. The 1998 decision by the U.S. Court of Appeals for the Federal Circuit in State Street Bank & Trust Co. v. Sig­nature Fi­nancial Group Inc., 149 F.3d 1368, had opened enormous new opportunities for astute entrepreneurs.

After the court ruled that processes could be pa­tented as long as they produced “useful, concrete and tangible result[s],” both individuals and companies deluged the U.S. Patent and Trademark Office with ap­plications for patents that would give them exclusive control over cer­tain methods for dealing with various business matters.

Comiskey, a general practice attorney in Washington, D.C., was one of the eager applicants. In late 1999, he filed an application to patent a method for using man­datory arbitration to resolve disputes relating to wills and contracts.

It seemed like a good idea at the time. But times have changed.

In September, a three-judge panel of the Federal Cir­cuit threw out many of the claims supporting Comis­key’s application, finding them to be unpatentable mental processes. The ruling in In re Comiskey, 499 F.3d 1365, is a defeat for not just one business method “inventor.” The decision appears to be a major retreat from the court’s position in State Street that significantly narrows the definition of what is patentable.

Moreover, many patent law experts say, the Comiskey ruling is part of a larger trend in which the Federal Cir­cuit, the U.S. Supreme Court, the PTO and Congress all have acted to scale back the rights of patent holders and applicants, while making it easier for existing pa­tents to be attacked.

What is clear, says Donald R. Ware, a patent litigator at the law firm of Foley Hoag in Boston, is that “the Supreme Court, Congress and the patent office are moving in a di­rec­tion that is unfavorable toward patentees. That is a big change.”

Read the full article here.