Bilski and Business Method Patents
On June 29 the Supreme Court came down with a ruling on a seminal case regarding business method patents. At issue was whether business method patents were permitted under U.S. patent laws, e.g. were method claims to a business method patent-eligible.
The good news is that the Supreme Court said that business method patents were not per se illegal and that it depends on how the business method is claimed whether it would pass muster. Note it was held that the claims in the Bilski case were too abstract.
The Supreme Court overturned the rationale used by the Patent Office in rejecting the Bilski patent application saying that there was no bright line test for patentability and that the machine-transformation test applied by the Patent Office was not the only test that could be applied.
Of interest was a question from Chief Justice Roberts to one of the Bilski attorneys. He inquired whether or not the attorney thought that the Supreme Court “should not mess this up”. The Bilski attorney replied that whatever happens it would probably take 20 years to resolve all the issues, no matter which way the Supreme Court ruled. This seems to be the case.
As it is now clear that certain business methods are patent-eligible, they will still have to pass the other patentability tests that preceded the famous State Street Case that originally allowed patentability of computer programs.
Of course with any business method patent that one would seek to enforce, it would presently be attacked based on Bilski and “abstractedness”. However, with the passage of time, how to claim a business method will emerge.
As one of my former clients opined, “if you don’t take the picture it won’t come out”. Thus, for those who have valuable business methods, attempting to patent them is still a good idea.