Bilski: Eyewitness Report and Expert Analysis
 |
Written by Gene Quinn Patent Attorney & IPWatchdog Founder Editor of the IPWatchdog.com Blog Posted: November 4, 2009 @ 1:18 pm Page viewed 3,250 times 
|
 |
US Supreme Court Building, Washington, DC
Background Information on Bilski
On October 30, 2008, the United States Court of Appeals for the Federal Circuit issued its much anticipated decision in In re Bilski. A central question presented was whether a purely mental process is patentable subject matter. The Federal Circuit, however, decided to address the issue quite broadly, and in so doing the CAFC ruling ultimately affected the patent-eligibility of numerous software-related inventions. The patent community had been expecting a far reaching decision that dealt a blow to “pure” business method patents, but few really expected just how far reaching the decision would be and that it would call into question thousands of software patents granted over the last 10 to 15 years. In essence, the CAFC Bilski decision brought into question many software patents issued since at least 1998, with many being now containing numerous invalid claims, and some with some of these patents now likely containing only invalid claims.
For additional background on Bilski and software patents in general see:
- The History of Software Patents
- The History of Software Patents II: Arrhythmia Research
- The History of Software Patents III: In re Alappat
- Software is the New Machine and Must be Patentable
- Why Not Allow Software Patents?
- A Blow to Software Patents
- Groklaw Response: Software is NOT Math
Bilski at the Supreme Court
On Monday, June 1, 2009, the United States Supreme Court agreed to hear the Bilski case. The questions the Supreme Court announced they would address are:
1. Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”
2. Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.
This means that the last chapter on business methods and software has not yet been written, but may well be decided by the Supreme Court when it issues its Bilski decision, which will likely be sometime during the Spring of 2010.
PLI Hot Topic Briefing
For an eyewitness account of the Supreme Court oral arguments, commentary, insights and tips for navigating the software and business method space while we await a decision from the Supreme Court please join me, John White, Scott Alter and Douglas Nemec for a PLI Hot Topic Briefing on Wednesday, November 11, 2009. For those in the media who would like to receive complimentary access to this briefing and several of the other PLI Bilski presentations given over the last 12 months please contact send an e-mail to media@pli.edu. Your full contact information including mailing address and publication information is needed for approval. Press requests cannot be taken or approved over the telephone. A confirmation email will be sent once your registration has been processed.
Related Posts
- History of Software Patents III: In re Alappat (♥ ♥ ♥ )
- The History of Software Patents (♥ ♥ ♥ )
- History of Software Patents II: Arrhythmia Research (♥ ♥ ♥ )
- Bilski Arguments Complete at the US Supreme Court (♥ ♥ ♥ )
- A Bird's Eye View of the Bilski Oral Argument (♥ ♥ )
- Exploring Justice Steven's Patent Past for Clues (♥ ♥ )
- Praying the Supremes Get Bilski Right in 2010 (♥ ♥ )
- The Bilski Oral Argument Speaks Volume: Start with 35 U.S.C. § 112 (♥ ♥ )
- US Supreme Court Grants Cert. in Bilski (♥ ♥ )
- Defining Computer Related Inventions (♥ ♥ )
Share & Enjoy With Social Networks
Tags & Categories
Posted in: Computers, Gene Quinn, IP News, IPWatchdog.com Blog, Patent Fools™, Software, US Supreme Court
 |
-Gene
Even though we are hoping for different outcomes, I look forward to reading your coverage, and wish you a safe trip.
Thanks POP. I am looking forward to it, and for further jousting on the subject. I hope all is well with you.
-Gene
The Supreme Court always seems to mess things up when it comes to patent law, so I fear their upcoming decision. In my opinion, the CAFC is much more experienced in patent matters and I’m not sure what the Supreme Court knows about IP matters that the CAFC doesn’t. Thus, the Supreme Court really should stay out of patent matters.
If they affirm Bilski it won’t be such a bad thing, since it seems most things are still patentable under Bilski anyway, as long as claimed properly (obviously I am someone who is pro-patent). Bilksi hasn’t changed my practice much. If they revese Bilski and allow Bilski’s patent (extremely unlikely) that would also be a good outcome (for me personally, but I know some people would dread this). But I fear they may institute a brand new 101 test which could throw out even more patents than the CAFC Bilski decision did. They were so clueless in KSR that I am fearing the worst about how they will screw this one up also.
Any ideas when the decision will actually come out?
Social comments and analytics for this post…
This post was mentioned on Twitter by CeyAM: RT @ipwatchdog: Bilski: Eyewitness Report and Expert Analysis http://bit.ly/MfuNT #finnegan #IP #patent #law…
For an alternative solution to Bilski see “A Short History of Private Patent Examination”. http://bit.ly/IARKL
Instead of rolling the clock back to the 1800’s, let’s roll it back even further to the 1600’s. That’s when world class experts, such as Galileo, were brought into the patent examination process. They had no problem knocking down dubious inventions.
When you combine the concept of outside experts with the power of internet enabled social networking technology, you get an incredibly powerful patent examination process. One that can stand up to the challenges of software and business methods.
Dubious inventions won’t stand a chance.
Valid ones will be respected.
Everyone will benefit.
How early do you have to get there to get a seat inside?
[...] Not Looking Good for Method/Software Patents 10 11 2009 Based upon the Supreme Court’s questioning during oral arguments in Bilski v. Kappos, it could very well be that getting patents for business methods/software may become a more difficult proposition. A nice summary of the oral arguments can be found at IP Law & Business. Some good resource material regarding software patents can be found at IP Watchdog. [...]