Intellectual Property Law

In re Bilski

By palfrey

The CAFC today decided a much-anticipated patent law case, In re Bilski.  The opinion is here. 

- If upheld, it could mean a significant narrowing of what constitutes patentable subject matter as a business methods patent.

- The State Street formulation might be out in the process (pages 19-20 of the opinion; on p. 20: “Therefore, we also conclude that the ‘useful, concrete and tangible result’ inquiry is inadequate and reaffirm that the machine-or-transformation test outlined by the Supreme Court is the proper test to apply.”).

- The court makes plain that some business methods and software patents can still issue, but they’d need to meet the machine-or-transformation test.  (Fn. 23, e.g.: “Therefore, although invited to do so by several amici, we decline to adopt a broad exclusion over software or any other such category of subject matter beyond the exclusion of claims drawn to fundamental principles set forth by the Supreme Court.”)

- The court plainly didn’t think much of the claim itself, making this a great set of facts for anyone wishing to shrink what is patentable and to take a crack at eliminating business methods patents altogether.  One gets a hint of the court’s view of the claim in the description of the invention: “…Applicants here seek to claim a non-transformative process that encompasses a purely mental process of performing requisite mathematical calculations without the aid of a computer or any other device, mentally identifying those transactions that the calculations have revealed would hedge each other’s risks, and performing the post-solution step of consummating those transactions. … [W]hile the claimed process contains physical steps (initiating, identifying), it does not involve transforming an article into a different state or thing. Therefore, Applicants’ claim is not drawn to patent-eligible subject matter under § 101.”  (p. 32) 

Patently-O has a nice explication, as always, plus an extraordinary set of comments.

Full post as published by John Palfrey on October 30, 2008 (boomark / email).