UsA
Paul J. sutton
Sutton Magidoff LLP
tHE fAtE of BUsInEss
MEtHoD PAtEnts
Companies across a range of US industries are waiting anxiously for a By way of a brief history, Bilski and Warsaw, two Pittsburgh, Pennsylvania
Supreme Court ruling on ‘business method’ patents, which could have far- businessmen, developed a method for electric utility companies and their
reaching implications for business and practitioners. customers to regularise costs, by considering factors such as supply, demand
and weather. Th ey believed their method to be novel enough to pursue
Few US intellectual property issues have generated as much recent
patent protection and did so by fi ling a US patent application. Th e patent
controversy as that of the patentability of inventions that relate to what have,
application claims in issue are directed to a method for hedging risk in a
correctly or incorrectly, been grouped under the term ‘business methods’. Th e
commodities trade, with no claim limitation requiring that their method be
controversy involving business method patents is not new, and is not new
performed using a computer or other particular machine.
to the US Patent and Trademark Offi ce (USPTO) and the US federal courts,
which have exclusive jurisdiction over patent infringement litigation.
Bilski and Warsaw were met with resistance by the USPTO. Th e method
A decision of the US Supreme Court aff ecting the lawful and proper scope
claims of their patent application were rejected. Th e USPTO concluded
of business method patents, an issue that has for years been the subject of
that their process was too abstract to be aff orded patent protection. Rather
litigation, is expected very shortly. At 2pm on November 9, 2009, Supreme
than accept defeat, Bilski and Warsaw appealed against this adverse
Court Chief Justice John Roberts closed the session of oral arguments in the
USPTO decision to the US Court of Appeals for the Federal Circuit
case of In re Bernard L. Bilski and Rand A. Warsaw (Bilski). Th e issues argued
(Federal Circuit). Th e Federal Circuit is sometimes referred to as the
in Bilski are far-reaching enough in both scope and their potential impact upon
Patent Court since all appeals from the US district courts involving patent
various industries to warrant close attention. Fields that are potentially directly
infringement litigation are made to the Federal Circuit. Th e three-judge
aff ected by the fate of business method patents include, for example, computer
Federal Circuit panel assigned to this appeal heard the oral arguments,
soft ware, biotechnology, pharmaceuticals and other life science areas, such as but before issuing their decision, the Federal Circuit without prompting
stem cell-based medicines, treatments and personalised diagnostics. A decision from another party ordered the rehearing of the case en banc (before all
from the court is expected during the fi rst half of 2010. judges sitting in this court).
162 World Intellectual Property Review Digest 2009
www.worldipreview.com
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