DECEMBER 2008 / JANUARY 2009
What Bilski means for you
Managing Intellectual Property
The US Court of Appeals for the Federal Circuit in late October changed the test for determining patentable subject matter in the US. IP experts from four industries explain how the decision will affect your patents
| One-minute read |
| The Federal Circuit's decision in In re Bilski at once reaffirmed that business methods are patentable and rejected the Court's previous "useful, concrete and tangible result" test, saying the "machine-or-transformation" test set out by the Supreme Court is the proper test to apply. The decision has clarified the guidelines for business method patents to some extent, but many feel that it has created considerable uncertainty in other ways. The financial services industry, where business method inventions are common, will be particularly impacted, while sectors such as software and internet technology also are likely to feel the effects. Although the Court did not address life science inventions in its decision, portions of the language could create problems for certain types of biotechnology and pharmaceutical patents as well. |
On October 30, 2008, the Federal Circuit issued its much awaited en banc decision in In re Bilski. Chief Judge Paul Michel authored the majority opinion, which was joined in by eight of the twelve other judges. Faced with a wide array of opinions offered by dozens of amici curiae from a diverse set of industries and perspectives, the Court rejected prior formulations of what should constitute a patent-eligible process in favour of the so-called machine-or-transformation test (see box). The Court found that the machine-or-transformation test is the only "governing" test and rejected the previously relied upon "useful, concrete and tangible results" test.
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