Defining 'Patenable': A Discussion of Bilski and Business Method Patents

Posted on January 11, 2010 by R. David Donoghue

Tomorrow, January 12, at noon, I will be participating in a panel discussion of the Bilski case as we await the Supreme Court's decision that could significantly change patentability of business method and potentially software patents.  Here is Northwestern's description of the panel:

Currently pending in the Supreme Court, the Bilski case stands to redefine the boundaries of what is patentable and has captured the attention of major software and technology giants like Microsoft and Google.  Practicing IP attorneys will discuss the potential ramifications of this case on patent law and the issues presented by patenting abstract business practices and innovations.
 

Joining me on the panel will be:
 

  • Andrea Augustine from Foley & Lardner; and
     
  • Thomas Donovan from Barnes & Thornburg.

The panel is open to the public, so please join us January 12 at noon in Northwestern Law's Room RB140.

 

Tags: , , , , , , ,
  • Email This
  • Print
  • Trackbacks
  • Share Link

Patentability at the Supreme Court: Bilski Oral Arguments

Posted on November 9, 2009 by R. David Donoghue

The Supreme Court hears oral argument today in Bilski v. Kappos.  The Court will decide the proper test for Section 101 patentability and will either decide or at least significantly impact the patentability of software and business method patents.  Here are the questions presented:

  1. Whether the Federal Circuit erred by holding that a "process" must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing ("machine-or-transformation" test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court's precedent declining to limit the broad statutory grant of patent eligibility for "any" new and useful process beyond excluding patents for "laws of nature, physical phenomena, and abstract ideas." 
     
  2. Whether the Federal Circuit's "machine-or-transformation" test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect "method[s] of doing or conducting business." 35 U.S.C. § 273.

For more on the history of both the Bilski case, check out my recent article with my colleague Mike Grill in the Northwestern Journal of Technology and Intellectual Property.  Patently-O has compiled the amicus briefs -- click here for the briefs supporting Bilski or neither party, and here for the briefs supporting the government.  The briefs supporting the government include a brief by a group of Internet Retailers that, I am proud to say, cites my law review article arguing for an even application of the Twombly pleading standard as to both patent plaintiffs and patent defendants -- click here for the amicus brief and here for my article from the John Marshall Review of Intellectual Property Law.

Click here for the SCOTUSBlog's preview of the argument.  For post-argument CLE options, click here for a list of courses compiled by Patent Docs and here for information on a CLE from IPWatchdog's Gene Quinn, who plans to attend oral arguments.

Tags: , , , , , , , , , , , , , ,
  • Email This
  • Print
  • Trackbacks
  • Share Link