Professor Mark A. Lemley is quoted in the Los Angeles Times in a story about the need for new ways of patenting to accommodate new technologies:

When does a great idea become a patentable invention?

That was a question easier to answer when Thomas Edison came up with the lightbulb and Whitcomb Judson devised the zipper – Industrial Age innovations that clearly fit with old ideas of what it meant to invent something.

But a recent case before the U.S. Court of Appeals for the Federal Circuit points up the difficulty of making such judgments in the age of the Internet.

Bernard Bilski and Rand Warsaw of WeatherWise USA Inc. in Pittsburgh developed a computerized method for using weather data to predict commodities prices and energy costs. But their efforts to patent the formula were rejected by the U.S. Patent and Trademark Office, a decision upheld by the federal appeals court.

...

The biggest problem with the Bilski decision, said Stanford University law professor Mark A. Lemley, is that it has thrown into question all innovations that involve more mental than physical activity, not just those on business methods. That could jeopardize existing patents on some medical diagnostic procedures and scientific data evaluations, as well as withhold patents from future innovations.M

“What does it mean to be tied to a machine? If you attach ‘in a computer’ to your application for a process patent, is that enough to pass the machine-or-transformation test? The patent office has been saying no, that you need to show a special machine has been built for this purpose,” Lemley said.

The Supreme Court hasn’t ruled on what is patentable since 1981, Lemley said, leaving the federal appeals courts to apply standards set in the infancy of the information age to complex modern innovations.

“The computer world has changed a lot since 1981. The courts have the power to adapt the law and keep it up with changing technologies, and they had been doing that. But Bilski is a step backward,” Lemley said.