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Door Thrown Open to Inventions

Tue, 06/29/2010 - 4:29am
Robert Tosti and Thomas Meyers, Partners, Brown Rudnick
Tosti, RobThe electronics industry will be impacted by the U.S. Supreme Court's decision today in the case of Bilski et al. v. Kappos. For about the past year, the door to the U.S. Patent and Trademark Office (USPTO) was closed to many inventions expressed as methods or processes, but now the door is at least a bit more open due to today's Bilski decision. The door had previously been wide open to all kinds of inventions regardless of whether expressed as a method, process, machine, device, system, etc.

Thomas-MeyersThe claims in the Bilski patent application are directed to methods of hedging risk in certain markets, and these claims now have been held unpatentable by both the Supreme Court and the appeals court below it. While the Supreme Court acknowledges that some so-called "methods of conducting business" or "business methods" could be eligible for patent protection, it states that abstract ideas are not and have never been patent eligible, and it held today that Bilski's risk hedging claims recite nothing more than an abstract idea.

The Supreme Court's decision today is not limited just to business methods, however. The decision applies to any invention expressed as a method or process. The decision states that the machine-or-transformation test is not the sole test for determining patentable subject matter. An invention expressed in a patent claim as a method or process will be found patent eligible even if it does not meet the machine-or-transformation test, as long as the invention does not constitute a law of nature, a natural phenomenon, or an abstract idea. What remains at least somewhat unclear is how one determines which inventions constitute laws of nature, natural phenomena, or abstract ideas and which ones do not. The Supreme Court does not seem to have provided us with any definitive test or tests for making those determinations.
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