SC Lawyer, May 2009, #2. In re Bilski: Another Piece of the Business Method Patent Puzzle.

Author:By Jennifer L. Ulsh and Richard M. Moose
 
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South Carolina Lawyer

2009.

SC Lawyer, May 2009, #2.

In re Bilski: Another Piece of the Business Method Patent Puzzle

South Carolina LawyerMay 2009In re Bilski : Another Piece of the Business Method Patent PuzzleBy Jennifer L. Ulsh and Richard M. MooseAs I sat in the office last week looking out at the rain and wondering when I'd be able to get out for another round of golf, I received a phone call from one of our clients. He was interested in protecting a new invention-software called "Weather-Wonder" that generates highly accurate weather forecasts from historical weather data. Input parameters representative of past temperature, pressure, precipitation and wind patterns are analyzed by a sophisticated software algorithm, and detailed geographic maps of the exact weather conditions for the next week are provided as output to a user. If successful, this type of invention could be highly profitable for the client and also ease the scheduling pains for our local golfers and beach bunnies-nothing could be finer in Carolina! The client wants to pursue patent protection for his invention but is concerned about whether the subject matter is patentable in light of a recent case he'd heard about, In re Bilski-something to do with a business method for commodities trading.

Advising the client on the best way to protect a business method or software invention has become almost like trying to put together a jigsaw puzzle while the pieces are changing shape and some may still be missing. For the past 10 years, businesses have filed and litigated tens of thousands of patents under a relatively pro-patent framework of puzzle pieces. Since 1998, the number of business method patent application filings with the U.S. Patent and Trademark Office (USPTO) has increased by an order of nine times to more than 13,000 applications per year. Isis E. Caulder, Software and Business Method Patents-the Latest Developments, December 1, 2007 at http://www.bereskinparr.com/English/publications/pdf/SoftBusMetPatCaulder2007.pdf (updated with current USPTO statistics at http://www.uspto.gov/web/menu/pbmethod/applicationfiling.htm). But with a backdrop of increasing public backlash over business method patents, the U.S. Court of Appeals for the Federal Circuit (CAFC) has tossed the majority of the existing puzzle pieces defining the patentability of process inventions out the door and thrown new ones in the mix.

Patent practitioners are now faced with operating under a vastly different set of standards set forth in the CAFC's landmark opinion in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), which affects the extent to which "business methods" and other process inventions are eligible for patent protection under 35 U.S.C. § 101-the federal patent law. Since many software and computer-related technologies are claimed as process inventions, the Bilski ruling affects a significant sector of high technology interests. The decision also affects a wide spectrum of patent law issues, including how patents will be prosecuted (i.e., the examination guidelines for new patent applications) and litigated (i.e., the validity of already issued patents). In light of the complex nature of this area of patent protection, the best advice to high technology and business clients is to remain fully engaged with experienced, qualified counsel that are apprised of the changing patent laws.

Many players hold a piece of the business method patentability puzzle

The extent to which business methods are eligible for patent protection under United States law has always been somewhat of a puzzle. The three major players contributing to the patentability puzzle are Congress, the Supreme Court of the United States and the CAFC-each of whom has variously provided its own respective pieces of input. Others are vying for their own piece of the puzzle, as the USPTO, major corporate entities in the software and high technology fields, policy groups, inventors and others interject their respective opinions on the merit of business method, software and related process inventions.

Congress' contribution comes in the form of Title 35 of the U.S. Code-the federal patent law-which defines, inter alia, the scope of patentable inventions under 35 U.S.C. § 101 to include "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." Business methods typically fit under the...

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