Patent Law Practice Center

Bilski’s Lessons: Three Months Later

Kenneth W. Brothers, a Partner at Dickstein Shapiro LLP and a presenter at PLI’s upcoming 5th Annual Patent Law Institute, sent in this article he wrote along with Philip G. Hampton, II wherein they discuss what has happened since the Supreme Court’s Bilski decision.  Here is an excerpt and a link to the full article.

After the Supreme Court issued its decision on Bilski v. Kappos, we predicted that much ink would be spilled analyzing the fractured opinions and opaque basis for the majority decision.  While the PTO has issued interim guidelines, since June, only one district court has attempted to apply the Bilski decision and the decision has only been mentioned in two Federal Circuit decisions.

Applying Bilski. The patent bar will devote years deciphering this decision, since the majority decision failed to enunciate either a clear standard for patentability under §101 or clear guidelines for determining what is a valid business method patent.  We expect that lower court decisions likely will fall into three general categories:  (1) adherence to the Federal Circuit’s machine-or-transformation test; (2) seat-of-the-pants determinations of whether the patent-in-suit is directed to abstract; or (3) a genuine attempt to weigh multiple factors to determine patentability. (more…)