By: Robert R. Sachs
In my posting on the differences between abstract ideas and abstractions, I stated that “The problem is not abstraction: the problem is inclination of the academy and the judiciary to throw up their hands in defeat when dealing with these issues. See Mark A. Lemley et al., Life After Bilski, 63 STAN. L. REV. 1315, 1316 (2011) (“Put simply, the problem is that no one understands what makes an idea ‘abstract’ . . . .”).
Michael Risch, one of the co-authors of Life After Bilski (LAB), correctly pointed out that I read this statement too broadly, that they were referring to “observers,” rather than themselves, and that they did propose various tests for abstract ideas. Michael is, of course, correct. I should have been more careful in my phrasing.
However, having now re-read LAB, I remain of the view that the approach therein does not tackle the question of What is an abstract idea? itself, independent of any reliance on patent law requirements and policy considerations. Instead, LAB proposes a functional approach to the question of patent eligibility by employing various legal, policy and value considerations of claim scope, preemption, contribution to innovation and so forth, as factors. In short, I would argue that LAB elides the question entirely and instead attempts to answer the ultimate question: What claims are patent ineligible?