Patent Law Practice Center

Institute Live Blog: Reactions To Bilski

Next panel  – “What Hath Bilski v. Kappos: Fallout in the Courts and the USPTO”.  The panel includes, Gary Hoffman of Dickstein Shaprio, David M. Rosenblatt of Thomson Reuters and Associate Prof. Michael Risch of Villanova School of Law.

– Gary Hoffman began with a discussion on how the Courts have reacted to Bilski.  The Federal Circuit has cited Bilski 7 times: 2 cases with substantive post-Bilski analysis: Prometheus (Court held MOT test is relevant but not the only test) & Research Corp. Tech (Court focused on whether the subject matter fails s 101’s requirement that it not be “abstract”); 2 references to the recency of the decision, 1 citation to the Supreme Court’s instruction that formulaic rules should be avoided,  1 metnion in dissent (Intervet), 1 case (King Pharma) where s101 analysis was passed over because the Fed Circ had already found the claims anticipated. (more…)

Bilski Aftermath: Will Europe’s “Technical Effect” Test Become the Law in the U.S.?

Robert Hulse, of Fenwick & West LLP, Practice Center Contributor and PLI Faculty member, discusses what the future may look like for business method patents:

I think most patent practitioners and applicants who have been following this case believe that we dodged a bullet, as the Court’s decision was about as good as could have been expected.  The Court removed the Federal Circuit’s overly rigid application of the machine-or-transformation (MOT) test as the sole test for patent eligible-subject matter, but it retained the test as a useful indication of whether a claim meets the subject matter requirement.  (In this respect, the Bilski decision is much like the Court’s decision in KSR a few years ago, where the court kept the teaching-suggestion-motivation (TSM) test, but held that it was just one of many useful ways to evaluate a claim for its compliance with the nonobviousness requirement.)  The benefit to applicants is that we can continue to rely on compliance with the MOT test by reciting a machine or transformation, subject to the “post solution activity” and “meaningful limits” considerations, while not being completely constrained by that test.

The Court also declined to exclude business methods from patent-eligible subject matter, although four justices (including Stevens, who is leaving the Court) would have done so.  This means that companies who innovate to create new ways of conducting business can continue to protect their inventions.  Excluding business methods for patent-eligible subject matter would have created more problems than it solved, not the least of which would have been how to define a “business method.” (more…)