Special Report June 22, 2009, 10:56AM EST

A Scholar-Activist Challenges U.S. Patent Law

John Duffy wants courts to rethink what can be patented and how to calculate damages. He wants more protection for business methods

SPECIAL REPORT

Voices of Innovation

John F Duffy is a professor at the George Washington University Law School. He is looking to change the U.S. patent system through litigation

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Critics of the U.S. patent system have high hopes that 2009 might be the year Congress acts to amend it. But their lobbying has failed for years, so John F. Duffy sees another path to change: litigation. "I've thought a lot about reform of the patent system through the courts," says the George Washington University Law School professor. "It's not like the courts can't adjust in this area."

Duffy, 45, should know. Two years ago, in a case known as KSR, he helped win the most important U.S. Supreme Court ruling on patent law in 40 years, making it harder to patent readily apparent inventions. And on June 1, the high court agreed to review another hugely important case with which Duffy has been involved, dealing with what kinds of business methods can be patented.

While teaching and scholarship are his primary focuses, Duffy has served as legal counsel to such companies as Goldman Sachs (GS), Bank of America (BAC), Intel (INTC), and Yahoo! (YHOO) in other cases that challenge established doctrine. "He seems to have the discipline to keep his own personal opinion isolated, which I appreciate because there are lots of people who are long on opinions and short on analysis," says Chief Judge Paul R. Michel of the U.S. Court of Appeals for the Federal Circuit, which hears all patent appeals.

protection for "business methods?"

Today's debate over patent law generally pits pharmaceutical and traditional manufacturers against high-tech companies. Makers of long-lived products want strong patent protection to ward off copycats. They and such tech powerhouses as IBM (IBM) and Microsoft (MSFT) are backing a Senate bill even though it would reduce penalties that patent infringers might be ordered to pay. But others in the faster-paced tech sector have turned against the measure because it doesn't cap damage awards enough. Without a concerted push by business, the Senate may once again shelve action to deal with more pressing matters.

Duffy isn't aligned with any industry camp. But he ardently contends that to promote innovation in an evolving economy, advances in a broad range of areas ought to be eligible for patent protection. This includes business methods, which are controversial because they cover things such as financial instruments and management techniques, not physical-world inventions like a new chemical or a machine. Thus, critics say, they don't warrant protection.

That view is too narrow, Duffy counters. "Precisely because innovations break with the preconceptions of the past, the law should not rely on yesteryear's notions of technology," he says, sitting in his paper-strewn office, which offers a view of the Washington Monument's upper half. "Innovation constantly surprises us and that's exactly what we should want."