Not long before this issue went to press, the US patent community received a long-awaited ruling from the country's highest court in Bilski v Kappos. While the Court preserved business method patents, it advocated a somewhat ambiguous new standard for patentability, focusing on whether or not an invention is "abstract".
It also included a dissenting opinion by four of the nine justices, who argued that business method patents should be banned entirely. The decision is comparable to KSR v Teleflex on obviousness in the impact it promises to have on prosecution and litigation.
While it remains to be seen how it will be further fleshed out in several upcoming Federal Circuit cases that turn on Bilski, there is no doubt that the ruling will change the way the USPTO assesses inventions, the way patent claims are written and the way patent cases are litigated. The three cases pending before the Federal Circuit all ironically have to do with life sciences inventions, rather than business methods, which demonstrates the potentially far-reaching implications of the ruling.
The commotion around the issue of patentable subject matter is not restricted to the US. All around the world, courts and governments are concerned about how to set appropriate limits on the types of technologies and processes that should be eligible for patent protection. In Australia and the US, gene patents are being challenged on the grounds that they restrict affordable access to crucial medical tests. In Europe, the Court of Justice last month ruled that DNA sequences can only be protected for the specific function named in the patent. And in Canada, the patent office has proposed new guidelines for treating computer-related inventions. As you will see in our coverage of Bilski this month, many different sectors and countries are grappling with this historically tricky subject, which has been complicated by new and increasingly less tangible technologies.
In fact, Bilski was such an important decision that its author, Justice Anthony Kennedy, made our annual list of the 50 most influential people in IP this year. For the eighth year in a row, Managing IP's editors have chosen 50 key figures across all areas of IP and from all over the world to profile as part of our annual feature: not just policy makers but campaigners, innovative businesspeople, judges and strategic thinkers.
One of those included this year is Victoria Espinel, who for the first time since her confirmation as the US IP Tsar last year has come forward with concrete plans for improving IP enforcement in the US. The impact of her Joint Strategic Plan may not be felt for quite some time, but as is evident in this month's report on her hearing with the Senate Judiciary Committee, her role is at least resulting in thorough – and sometimes passionate – discussion of IP issues at the highest levels of US government.
Leading off our top 50 is Benoît Battistelli, who on January 1 took over from Alison Brimelow as president of the European Patent Office. Many IP owners had high hopes that Brimelow would be able to get to grips with the reforms necessary at the Office to allow it to deal more effectively with its mounting financial problems and the challenges of globalisation. In the end, however, it seems that her no-nonsense approach and plain speaking advocacy for reform – attributes that had won her much admiration as a UK civil servant – earned her few new friends in Munich.
Battistelli has a reputation as a more consensual, classically continental administrator, which may make his next five years at the Office a little smoother than Brimelow's three-year stint. But Managing IP hopes that his eagerness to keep all of the EPO's stakeholders on side will not prevent him from tackling some of its long-term challenges. His decision to launch two audits into the EPO's financial situation and its IT needs is a positive sign.
Eileen McDermott
Americas editor