|
Bilski: Eligibility of Business Methods Patents in the US
02/07/2010
Bilski v. Kappos
On 28 June 2010 the US Supreme Court issued its long awaited “Bilski” judgment concerning the patentability in the US of a business method invention that explains how commodities buyers and sellers in the energy market can protect, or hedge, against the risk of price changes. The Supreme Court affirmed the Federal Circuit's decision in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), holding that Bilski's claims were not patentable under Section 101 of the US Patent Act because they recited abstract ideas.
Background
Section 101 of the US Patent Act defines four independent categories of inventions or discoveries that are patent eligible: a “process,” “machine,” “manufacture,” and “composition of matter” and the US Supreme Court’s precedents provide three specific exemptions to these broad principles: “laws of nature, physical phenomena and abstract ideas”. In the past, a “machine-or-transformation test” has been used to decide that a claimed process is patent eligible if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.
The Supreme Court’s Findings
In Bilski the Supreme Court has confirmed the finding that the claims of this particular application were ineligible for patent protection as an “abstract idea”. It has also confirmed that some business methods may be patent eligible in the US. The Supreme Court has also expressly found that the “machine-or-transformation test” is not the sole test for patent eligibility of a claimed process in the US.
Conclusions
It seems that patent applications directed to pure business method inventions will be rejected in the US as abstract ideas. Such applications would also be rejected in Europe as not being eligible for patent protection. Following Bilski it will still be possible to patent inventions in the US which, in contrast, the European Patent Office would not consider to have the requisite technical character for patent protection.
Although Bilski has rejected the “machine-or-transformation test” as the sole test for determining that a claimed process is patent eligible, it is still advisable to include claims which would pass this test so that the bite of the “abstract idea” US exclusion is avoided.
The articles on this page discuss developments in IP law at a particular date but the developments discussed may have been superseded by subsequent developments. You are therefore strongly advised to contact us for advice before acting on anything contained herein. Please see our full disclaimer and copyright notice for further information.
_____________________________
© Kilburn & Strode LLP, 1998 - 2010
|
