The Bilski Battle Ends…still the war of Patenting Business Method is on…

Introduction:-

Do you need one? I am sure by this time you would have read or heard about the Bilski case somewhere. Well it’s not too late to know about it. Petitioner filed a patent application that claims a Business method @ USPTO. The claim included a subject matter that explains how commodities buyers and sellers in the energy market can protect or hedge against the risk of price changes. The Patent examiner rejected the application on the grounds that the invention is not implemented in any specific apparatus and merely solves a mathematical problem. Subsequently, the BPAI agreed to the examiner’s rejection and affirmed the case. At this time, Bilski moved to Federal circuit to fight for his case. The En Banc court decided and affirmed the case. But the reason in the Judgment presented by the court to reject the patent application has turned every Professional in this field to look back to this case.

Federal Circuit: The Bilski case goes famous

In order to patent a claimed Process, the invention should produce a “Useful, Concrete & Tangible” result and so far, this was the standard test that all the US courts including Fed. Circuit was relying upon. Contrastingly, Federal circuit when hearing this Bilski case rejected to apply the “Useful, Concrete & Tangible” test for the claimed Invention. Instead of the above test, the court was relying on “Machine or Transformation” test. “Machine or Transformation” test allows a claimed process to be patented if the claimed process is tied to a machine, state or thing or if the process transforms a particular article into a different state or thing.

When this “Machine or Transformation” test applied to Bilski case, the claims failed to meet the test requirements.

Claim 1 of Bilski consists of the following steps:

“(a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumers;

(b) identifying market participants for said commodity having a counter-risk position to said consumers; and

(c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions.”

The judgment affirmed the case and summarized that the “Machine or Transformation” test is the sole test for determining whether a claimed process is an eligible patent subject matter. This created a big chaos for the people in this field questioning the rigidity of the Federal circuit when deciding the process claims of the patent applications. No wonder, Bilski tried the apex court to fight for his case.

Bilski in Supreme Court:

On June 28, 2010, Justice Kennedy, Justice Stevens, Justice Breyer & Justice Scalia gave their judgments together. In the judgment, they affirmed the case by saying the particular process of the Bilski case is not eligible to be a patentable subject matter. But the Judges pointed out the rigidity of the Federal circuit decision for this case.  In particular, Justice Breyer while conferring the Justice Kennedy’s judgment further added by saying “Although the courts can use “Machine or Transformation” test for determining whether a claimed process under section 101, but the Federal circuit erred in saying the test as “exclusive test”.

The War Continues…

Post Bilski, still it is not clear whether All Business method patents can be patentable or not by applying either one of the tests. What about method patents from other Industries. Definitely, they can be relieved and atleast they can protect their claims by relying on either of the tests…until new landmark case roots from Federal circuit…

Author – Veera Raghavan Rajendran,

Patent Specialist, IIPRD.

The Author of the Blog can be reached: Raghavan@iiprd.com.

Leave a Reply

Archives

  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010