The recent Federal Circuit decision in In re Bilski last October has begun to cause some concern in the biotech sector. As we have reported in previous blog entries, Bilski created a new test for method claims in patents, requiring a claimed process to be tied to a machine or apparatus, or to transform an article into a different state or thing (see blogs “In re Bilski: What Constitutes a Statutory ‘Process’ Under §101?” posted 11/5/08, “Supreme Court To Review Method Patent Case” posted 6/2/09, and “More on Bilski and Business Method Patents” posted 6/3/09). Even though the technology in Bilski was not scientific in nature, some are concerned that the precedent set by this case could have ramifications for the biotech sector since many issued biotech patents and pending biotech patent applications, such as, but not limited to, certain processes for genetic testing, do not rely on a machine or transformation. As we await the U.S. Supreme Court hearing in October, we hope that the potential application of Bilski to the biotech sector will be addressed by the Bench.
Many titles were bestowed upon Michael Jackson during his lifetime, but one not commonly associated with him was "inventor".
But indeed, The King of Pop is listed as a co-inventor of United States Patent Number 5,255,452, entitled "METHOD AND MEANS FOR CREATING ANTI-GRAVITY ILLUSION", and covering shoes of the type worn while performing dance routines in his hit single "Smooth Criminal", where he famously incorporated a 45-degree lean in the choreography.
Given that an asserted patent such as the‘216 patent can be subject to a wide variety of attacks during litigation, when such patents survive litigation and are found to be infringed, they may point to good examples of claim drafting -- especially when enormously large amounts of damages were at stake.
Those seeking to expand business-method patents cite economics as a “useful art” and explain that these patents encourage innovation and produce tangible results. Conversely, opponents indicate that the patents curtail the free-flow of information and claim abstract ideas, both contrary to the goals of patent protection. Certainly, the Court will seek to balance the interests of both inventors and the public, which benefits from the increased societal knowledge that patents provide. But, as of now, the Court of Appeals’ decision seemingly puts the property rights of many business-method patent-holders in jeopardy with both the legal and business worlds taking note and this being heralded by some as "The most important patent case in 50 years" (link).
Sebastian Ohanian Contributed to this Entry.
The Supreme Court of the United States has decided to review the federal appellate court decision of In re Bilski, a seminal decision concerning method patents, in which the Court of Appeals for the Federal Circuit proposed a "machine-or-transformation" test for determining whether a process or method was capable of being patented.
The Supreme Court's docket reveals that the "Questions Presented" for this appeal (as framed by the party seeking review, in this case the patent applicant), are the following:
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."
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.
John Fulton, Jr. contributed to this blog entry.
Earlier this year, Gibson Guitar Corp. became involved in litigation related to the enforcement of its patents against the makers and retailers of the GUITAR HERO video game. With the emergence of the GUITAR HERO video game into the popular culture, the results of this litigation could have interesting consequences. Here is one of the first news articles on this topic: www.msnbc.msn.com/id/23732204/
Microsoft was recently awarded U.S. Patent 7,415,666 for a Method and System for navigating paginated content in page-based increments which has some up in arms at the notion that Microsoft could patent 'Page-Up' and 'Page-Down' keystrokes. (link) However, as you consider the outrage, remember that patents are much more than what is set forth in their titles and abstracts, and a true understanding of what is covered can only result from 'paging down' through the text of the patent to the claims. They are the starting point for revealing the true scope of a patent, which in most cases is much more nuanced than what may originally be thought.
New rules concerning ex parte patent appeals are set to take effect Dec. 10, 2008. In response to their publication in June 2008, many in the field are characterizing them as making the process more costly and cumbersome, while proponents claim they provide much needed standardization to the process. (Article Here)