Patent Law

From BPCouncil:

Some 30 years after it last looked into the subject, the Supreme Court decided to weigh in on the burning issue of software and business method patentability by granting the certiorari petition and hearing the appeal filed by inventors Bernard Bilski and Rand Warsaw. The two requested the Court to reverse the Federal Circuit?s decision in re Bilski (now known as Bilski vs. Doll), which changed the test for determining patentable subject matter in the US. While some experts are surprised at this development ? saying that the Circuit?s ruling closely followed Supreme Court precedent ? others saw it coming. According to Eileen McDermott, in her article for managingip.com, this latter group contends that the issues are too critical, the dollars involved too large, and the implications on the US economy (where many inventions are tied to the computer) just cannot be ignored.

Inventors Bilski and Warsaw had sought to patent a method of hedging risks in the sale of commodities, that is, a way to buy or sell energy at a fixed price based on the expected weather for a season. The application was denied by the US Patent and Trademark Office (USPTO), the case went to the US Court of Appeals for the Federal Circuit. In a 9-3 ruling that basically narrowed the scope of business processes eligible for patent protection, the Court of Appeals upheld the rejection, ruling that business method patents applied only to those tied to a particular machine or apparatus, or processes that transformed an item from one state to another. By ruling as such, the appeals court actually overturned its own 1998 decision that patents should protect business methods that had a ?useful, concrete and tangible result.?

Now, the current Bilski petition to the Supreme Court asks the Court to consider whether the Federal Circuit erred in its ruling under US law and whether its machine or transformation test contradicts Congressional intent that patents protect methods of conducting business in 35 U.S.C. Section 273.

Read the full article here.