U.S. Supreme Court Decides Business Method Patentabiliy Case
I received this from our trademark & patent lawyer Rich Roberts at www.robertspatent.com
Interesting to see what’s new in the world of trademark and patent law:
This morning the United States Supreme Court issued its much awaited decision in the business-method-patent case of Bilski v. Kappos. The lower U.S. Court of Appeals for the Federal Circuit upheld the rejection of the applicant’s patent application for a business method claims as not meeting its newly devised “machine-or-transformation test” of patent eligibility. Under this test a claim to a process qualifies to be considered for patenting only if it either (1) is implemented with a particular machine, that is, one specifically devised and adapted to carry out the process in a way that is not concededly conventional and is not trivial; or else (2) transforms an article from one thing or state to another. The Supreme Court rejected these tests and decided that although these tests may be a useful and important clue or investigative tool, it is not the sole test for deciding whether an invention is a patent-eligible “process” under 35 U.S.C. 101.
This case is important because the Court rejected the theory that business-methods are categorically outside of patent eligibility under 35 U.S.C.101. The Court upheld the rejection of this particular applicant’s claims on the basis of its prior decisions of Gottschalk v. Benson, 409 U. S. 63, 70 (1972), Parker v. Flook, 437 U. S. 584, 588, n. 9. Pp. 5–8, and Diamond v. Diehr, 450 U. S. 175, 182, holding that the claims do not present patentable processes, but merely attempt to patent abstract ideas. The full opinion is at: http://www.supremecourt.gov/opinions/09pdf/08-964.pdf
If you ever need trademark & patent expertise, we highly recommend Rich, here’s his info:
Richard S. Roberts
Roberts & Roberts, L.L.P.
Attorneys At Law
P.O. Box 484
Princeton, New Jersey 08542-0484
TEL: (609) 921-3500
FAX: (609) 921-9535
E-Mail: rroberts@robertspatent.com
Website: www.robertspatent.com