Well, that didn’t take long.
Last week I gave examples of two types of claims that probably shouldn’t have been allowed under current Bilski standards. Today brings us a fine specimen from another category, the Pure Miss:
Commentary: Not much room for argument here. No machine. No transformation. No dice. And if you’re thinking there might some possible “inherency” defense (i.e., that “calculating” requires a computer), look at dependent claim 2 and think again:
The Notice of Allowance was mailed December 2008, several weeks after Bilski.
This is the third Goldman patent to be featured on this blog. (See here and here.) That’s starting to approach IBM status, despite Goldman only filing a fraction of the number of patents as Big Blue (or so we’d believe – Goldman has an apparent strategy of filing many of its applications with non-publication requests). But consider this: in the last six months (i.e., since Bilski), 8 patents have issued to Goldman Sachs. There was only one 101 rejection in all their prosecution histories, and that came in 2003 (to U.S. Patent No. 7,457,774 “Dynamic reallocation hedge accounting”, which was overcome with adding a “computer” to the claims.)
Going back further, looking at the histories of the 21 Goldman patents that have issued in the last twelve months, the most recent subject matter rejection came in January 2008, applying the State Street test. Three more of those 21 patents also received 101 rejections along the way for differing reasons: a 2006 application of State Street (7,389,261); a 2007 “computer program” rejection (7,403,919); and a Nuijten-like signal rejection in 2006 (7,376,615). All these rejections were easily addressed with simple amendments or cancellations. None of the Goldman patents have claims that were rejected under the test we now know and love.
Other than finding this fact noteworthy, I’m not quite sure what to make of it. Certainly some of these Goldman patent claims present better than others under the new 101. But considering that nearly all of them are in what many would consider Bilski’s business method sweet spot, it seems a bit surprising they don’t appear to have received higher scrutiny; even pre-Bilski examiners were applying the machine-or-transformation test and handing out such rejections regularly, right? Go figure.
Goldman Sachs is legendary for its success on Wall Street. Perhaps it should it be celebrating its success in Alexandria, as well.
(Then again, do you really want to be the owner of a patent on anything within 100 yards of credit default swaps today?)