The fate of
business method patents may be decided very soon since the
US Supreme Court has decided to take on
Bilski v. Doll. The case will set a significant precedent that will impact the validity of business method and even software patents. The Supreme Court will review the US Court of Appeals for the Federal Circuit’s decision of
Bilski which upheld a rejection of a patent application of a method for managing risk in commodities trading.
As of now, there is much debate as to the patentability of business methods and software, like in the
Bilski case. Typically the issue is whether these types of patents are just too broad and/or abstract. The Federal Circuit narrowed the standard by stating patent law only protects inventive processes that involve a “particular machine” or “transform an article from one state to another.” The result of this decision would lead to greater scrutiny of business method and software patents. This is a departure from the prior standard of
Section 101 which states “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent…”
So what’s at stake? Typically the software, finance, and pharmaceutical industries want less scrutiny and broader patent eligibility because they rely heavily on these types of patents. Many companies in these industries could lose existing and future patents rights if the stricter machine/transformation test above stands. Will this lead to an increase of Section 101 challenges to a patent’s validity in patent litigation? Probably if the Supreme Court allows
Bilski to stand.
Interestingly, remember my prior blog about
Sonia Sotomayor and her background in IP law? If the timing is right, she may be involved in reviewing
Bilski. Hopefully, the decision will be a thoughtful one given her expertise in
IP litigation.
