February/March 2009 / Intellectual Property
Patenting Software and Business Methods After Bilski
Late last year, the Court of Appeals for the Federal Circuit decided In re Bilski, addressing the patentability of software and business methods. The “useful, concrete and tangible result” test out of the 1998 State Street Bank case was replaced by the older “machine-or-transformation” test, which says that to be patentable an invention must be either tied to a particular machine or apparatus or must transform a particular article into a different thing or state.
Actually, the author says, USPTO examiners have been applying that test since at least May of 2008, when the USPTO filed its brief in the Bilski appeal. Since Bilski, decisions by an influential USPTO board have helped clarify the issue, apparently “leaving untouched the long-standing view that an invention claimed as computer-running software that carries out a method is eligible for patent protection.”
The author says that other recent and less well-known Federal Circuit decisions regarding such familiar aspects of patentability as novelty, non-obviousness and “enablement” – which “always have and will continue to be our best gate-keepers against bad patents” – may prove to be as significant as Bilski.
