Patent Law

The above titled article by Matthew A. Goldberg appeared in the December Litigation News, a publication of the American Bar Association.  He writes, in part:

After considerable anticipation by the patent bar, the U.S. Court of Appeals for the Federal Circuit has announced its ruling on business-method patents in In re Bilski. The en banc decision, by what has been touted as the most influential patent-law court in the country, formally rejected the prevailing test for business-method-patent eligibility, under 35 U.S.C.§ 101, that had been set forth in its 1998 State Street Bank Trust Co. decision.

While the recent Bilski opinion neither directly overruled State Street nor categorically invalidated BMPs, it did throw out the BMP test as defined in State Street.

Bilski imported the Supreme Court?s Nixon- and Reagan-era patent law jurisprudence into the twenty-first century by holding that patentable BMP subject matter must either (1) be tied to a particular machine or apparatus or (2) transform a particular article into a different state or thing.

While the Bilski court intended to announce a bright-line rule, patent lawyers say the test, in practice, is anything but.

Read the full article here.