Living and Thriving In a Post-Bilski World
Intellectual Property Law Update 10/28/10 Carl R. Schwartz
In June 2010, the Supreme Court (the "Court") issued its opinion in Bilski v. Kappos regarding whether, and the extent to which, business methods are patentable subject matter. While the Court found that business methods are not precluded subject matter per se, it indicated that the claims could not just cover abstract principles (e.g., something as broad as the idea of financial hedging).
Thus, the Court has left intact a realistic opportunity for U.S. patent protection for a wide variety of nontechnological U.S. business methods. Quarles and Brady has developed a series of strategies to follow up on this opportunity for our clients as well as to try to minimize Bilski type issues in our pending and future cases. Some of these strategies, many of which have been part of our practice in the past, include:
- determining whether the invention can alternatively be effectively claimed as an apparatus rather than just as a method (e.g. a computer system; a computer readable medium). Where this is possible and effective, such an additional claim set typically avoids Bilski concerns completely as the Bilski doctrine has traditionally been applied to reject patentability of method claims, not apparatus claims;
- determining whether a specialized type of equipment is used to perform the method, and if so, identifying the equipment in the specification and some claims. For example, in an MRI imaging method case, we might describe an MRI scanner in the specification and include that feature in the claims. In this manner, the claims are likely patent-eligible because the U.S. Patent and Trademark Office (the "PTO") has indicated that claims reciting a specialized machine are not precluded from patentability as too abstract;
- determining whether some type of meaningful physical transformation can be described in the specification and in some method claims. For example, a method that involves treating a patient with a vaccine could include a recitation of raising antibodies in the patient. Such a resulting physical transformation has been described by the PTO as something likely to lead them to not find the claim too abstract;
- monitoring the PTO guidelines and developing case law to try to avoid characterizing applications in ways likely to trigger problems. For example, the PTO has recently published interim guidelines where they signal that there will be great difficulty for claims drawn to something like improved methods for arranging human dating or exercising more effectively. For example, if we receive a disclosure on a dating system for humans, we might recharacterize the case as an information review method without reference to "dating."
In sum, the Bilski decision appears to have left considerable opportunity for protecting subject matter in the nontechnological business method area. Quarles and Brady takes aggressive pre-emptive steps with respect to newly disclosed and pending cases to try to maximize these opportunities for our clients.
If you have any further questions, please contact Carl Schwartz at (414) 277-5715 / firstname.lastname@example.org or your Quarles & Brady attorney.