Waiting for the Supreme Court to Decide Bilski

Charles R. Macedo is a partner at Amster, Rothstein & Ebenstein LLP, and the author of The Corporate Insider’s Guide to US Patent Practice, which provides a basic understanding of patent practice in the United States as it relates to both obtaining and enforcing patents. Macedo’s practice specializes in all facets of intellectual property law including patents, trademarks and copyrights.  In the article below he shares advice for patent protection.  Read his other OUPblog posts here. [FN: The author would like to acknowledge the assistance of Norajean McCaffrey and Marion Metelski in preparing this Blog entry]

From 1998 until about a year ago, the law on what type of inventions could be the subject of patent protection seemed pretty clear. If a claimed invention produced a “useful, concrete and tangible result”, the invention was deemed patent-eligible subject matter. Over the past few years, that settled law began to be questioned, and in 2008 the U.S. Court of Appeals for the Federal Circuit threw out that test, and invoked a different, more restrictive “machine-or-transformation” test. Last November, the Supreme Court heard arguments in Bilski v. Kappos, where the Supreme Court for the first time in decades is expected to clarify the standard for what processes will be deemed patent-eligible. In prior Oxford Blogs, I addressed some of the questions raised by the Justices at the oral arguments.

While we wait for a decision, life continues to move on, and difficult decisions need to be made on how to proceed with efforts to obtain patent protection in this area. To help guide potential patentees during this interim period, I have put together, with colleagues of mine at Amster, Rothstein & Ebenstein LLP, the following recommended interim steps to be implemented in patent prosecution involving business-related and computer-related inventions in order to minimize risk for the future and increase the likelihood of a patent issuing and ultimately being enforceable down the road.

As a general rule, if possible, it is best to conform to the PTO‘s positions on patent-eligibility. By conforming to the PTO’s positions, an applicant is more likely to both expedite a patent application’s likelihood of issuance, and probably be within a safe harbor of what processes will ultimately be deemed patent-eligible.

*Include disclosure to tie the invention to a computer or other machine. For example, if the invention is related to a financial service product which is electronically traded, disclose the computer system used to electronically trade the product. If the invention is related to a product which requires a complex calculation, disclose the computer system that performs the calculation as well as the algorithm used in the calculation.

*Don’t claim software as software. Software can instead be claimed as programming stored on a computer readable medium that is run on one or more processors. Process claims which act on various parts of the computer system (e.g., a processor, a communications portal, a computer readable medium, etc.) are more likely to pass muster. Beauregard claims remain acceptable to the PTO as patent-eligible subject matter.

*Don’t use fancy forms of claims. In Ferguson, the applicant unsuccessfully tried to claim a paradigm which is not one of the four statutory classes of patent-eligible inventions.

*Don’t use fancy definitions in the specification for terms like “computer readable medium.” It is safer to use the ordinary meaning of a computer readable medium.

*Have “computer implemented processes” include physical structures in the method steps. Try not to use only the preamble to establish that the claimed process is tied to a machine.

*For non-computer implemented inventions, try to tie the invention to other tangible media, and to transform physical objects, e.g., entering into a written or electronic agreement.

*When arguing patentability, try to reference Supreme Court decisions. Merely relying upon the latest Federal Circuit, BPAI or district court decisions may not be good enough down the road if the law changes.

For a more detailed discussion on interim steps see our posting from IP Law 360.

Since no one really knows how the Supreme Court will ultimately decide Bilski, or how the Patent Office and lower courts will interpret the Supreme Court’s decision after it issues, we recommend that it is best to continue to hedge your bets during this period of uncertainty by continuing to seek patent protection for good inventions — particularly if such inventions can be tied to machines or transform matter.