by GERSON PANITCH, FINNEGAN

June 14, 2010

Patent professionals and U.S. Supreme Court watchers alike on high alert as a Bilski decision is expected before the Court’s 2009 term comes to an end this month.  Perhaps no case is more anticipated than the decision in Bilski v. Doll, especially for those in high-tech fields such as telecom, software, and professional services.  Over a year has passed since the Supreme Court agreed to hear Bilski’s appeal (June 1, 2009), and more than seven months since hearing oral arguments (Nov. 9, 2009).  Bilski, which deals with the types of processes that are patentable in the U.S., is one of the oldest pending cases on the Supreme Court’s docket.  If no decision is reached by the end of this month, the Court must either dismiss the appeal or reset the case for a new argument in next year’s term. 

Until the Bilksi case, the U.S. was a place where it was possible to patent almost “anything under the sun that is made by man.”  Only such things as abstract ideas (e.g., mathematical algorithms); natural phenomena; and laws of nature were considered unpatentable in the U.S.  And even inventions in these areas were still patentable if expressed in a practical application.  As a result, throughout the Internet boom and to the present, the U.S. became a haven for protecting methods of doing business, even though business methods remained unpatentable in most other countries of the world.

But the Bilski case signaled that a change might be on the horizon.  Bilski tried to patent a method for managing commodity trading risk.  The U.S. Patent and Trademark Office rejected Bilski’s patent claim because it could have been performed without the use of a machine.  The appeals court affirmed the rejection, stating that a process is patentable in the United States only if:

(1) it is tied to a particular machine or apparatus, or

(2) it transforms a particular article into a different state or thing.

On Bilski’s behalf, lawyers from the Finnegan law firm argued to the U.S. Supreme Court that such a narrow interpretation traps U.S. patent law in the 19^th century by limiting patentable processes to traditional manufacturing methods, and excluding modern business practices.  Moreover, the Federal Circuit’s test effectively draws a distinction between technological fields; something the U.S. patent law has never done.  Business methods, financial services, software, and medical diagnostic inventions are now in an unacceptable state of uncertainty as they await the Supreme Court’s decision. 

The U.S. Supreme Court rarely decides patent law cases, and the decision in Bilski is sure to have far-reaching implications for patenting in the U.S.

About Finnegan 
With more than 375 intellectual property lawyers, Finnegan is one of the largest IP law firms in the world.  From offices in Washington, DC; Atlanta, Georgia; Cambridge, Massachusetts; Palo Alto, California; Reston, Virginia; Brussels, Belgium; Shanghai, China; Taipei, Taiwan; and Tokyo, Japan, the firm practices all aspects of patent, trademark, copyright, and trade secret law, including counseling, prosecution, licensing, and litigation.  The firm represents clients on IP issues related to international trade, portfolio management, the Internet, e-commerce, government contracts, antitrust, and unfair competition.  For additional information on the firm, please visit www.finnegan.com.

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