Supreme Court: Software is Patentable

The Supreme Court has issued its long awaited opinion in Bilski v. Kappos.  Read it here.  The Supreme Court essentially affirmed the Federal Circuit’s decision which is summarized here.

via Patently-O and Filewrapper.


Business Method Patents at the U.S. Supreme Court

On June 1, 2009, the United States Supreme Court granted certiorari in Bilski v. Doll, and will consider whether the en banc decision of the Court of Appeals of the Federal Circuit “Federal Circuit” in subjecting business method patents to the “machine or transformation” test was appropriate. Specifically, the Supreme Court will consider the following two issues:

  • 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.”, and
  • 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.

via Business Method Patents at the U.S. Supreme Court –


Bilski cited, again, in BPAI rejection

Method claim 1 does not recite any machine or apparatus or call for transforming an article into a different state or thing. A domain name is simply a series of characters representing the address of a resource, such as a server, on the World Wide Web.

Links: Ex parte Atkin.


PTO will apply its “broadest reasonable” claim interpretation

The legal point to consider from this case is that the PTO will apply its “broadest reasonable” claim interpretation during its §101 analysis. Here, the BPAI panel found that the broadest reasonable interpretation of IBM’s claim does not necessarily “require computer or machine implementation” and thus that the claim fails the “tied to a particular machine” prong of Bilski machine-transformation test.

via Patent Law Blog (Patently-O): BPAI: PTO Should Apply Broadest Reasonable Claim Interpretation to Section 101 Analysis.