The real standard articulated in Bilski and Alice

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

The real standard articulated in Bilski and Alice

In a session at the AIPLA Annual Meeting yesterday morning, David Wille of Baker Botts examined the Bilski and Alice rulings and suggested that despite the criticisms, the Supreme Court is laying out an alternative approach to the question of patentability

Wille pointed out that one of the major criticisms of the Alice decision was the ruling that abstract idea and performing it on a computer was “not ‘enough’ [sic]” to transform it into a patentable invention but, the decision did not give guidance as to what is considered enough.

Under this test, there is now a spectrum of potentially patentable business method-related subject matter, with technological inventions being mostly patentable. The tough questions, Wille noted, instead lay with computer implemented business methods.

While some observers suggest that the Supreme Court was essentially advocating a “technological arts” test, Wille argued that the Supreme Court had another concerns in mind.

“They importantly emphasized that just because an invention involves an abstract concept, it does not mean that it’s not statutory subject matter, he said. “In fact they went further: they stated that what they were concerned about is tying up the building blocks of human ingenuity.”

Wille noted that the Court in Alice reiterated this idea in several ways, such as references to fundamental business practices.

In light of this, he argued, the lesson may be that the Supreme Court is worried, not so much about how to properly define what constitutes an abstract idea or whether something goes beyond that abstract idea enough to constitute an invention, but rather which abstract ideas are patentable and which ones are not. Namely, those that cover the building blocks of human ingenuity or fundamental business practices.

This test appears to explain the Supreme Court’s rulings in Alice and Bilski, and the PTAB may also be taking this approach. Wille pointed to the PNC Bank case involving a patent for a system that analyzes data and places seals of authenticity on websites. While the PTAB instituted covered business review on other grounds, it rejected a request to do so on Section 101 grounds, finding that the claim was not directed to an abstract concept and that putting the authenticity seal on a website or document was not a fundamental business activity or a building block of the modern economy.

“There’s a suggestion, then, that maybe the line should be drawn looking at whether or not the abstract concept is a fundamental building block,” Wille explained.

more from across site and SHARED ros bottom lb

More from across our site

Attorneys explain why there are early signs that the US Supreme Court could rule in favour of ISP Cox in a copyright dispute
A swathe of UPC-related hires suggests firms are taking the forum seriously, as questions over the transitional stage begin
A win for Nintendo in China and King & Spalding hiring a prominent patent litigator were also among the top talking points
Rebecca Newman at Addleshaw Goddard, who live-reported on the seminal dispute, unpicks the trials and tribulations of the case and considers its impact
Attorneys predict how Lululemon’s trade dress and design patent suit against Costco could play out
Lawyers at Linklaters analyse some of the key UPC trends so far, and look ahead to life beyond the transition period
David Rodrigues, who previously worked at an IP boutique, said he may become more involved in transactional work at his new firm
Indian smartphone maker Lava must pay $2.3 million as a security deposit for past sales, as its dispute with Dolby over audio coding SEPs plays out
Powell Gilbert’s opening in Düsseldorf, complete with a new partner hire, continues this summer’s trend of UPC-related lateral movement
IP leaders at Brandsmiths and Bird & Bird, who were on opposing sides at the UK Supreme Court in Iconix v Dream Pairs, unpick the landmark case and its ramifications
Gift this article