In Re Bilski: Another Attempt To Define The Boundaries Of Subject Matter Eligibility For U.S. Patents For Emerging Technologies
Mondaq Business Briefing › United States Law Articles in English (2009)
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In Re Bilski: Another Attempt To Define The Boundaries Of Subject Matter Eligibility For U.S. Patents For Emerging Technologies
I. Introduction
The recent decision of the Federal Circuit in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), marked the end of a decade that saw the scope of patent-eligible subject matter in the United States stretch to its greatest extent by encompassing any invention that produced a useful, concrete and tangible result. In State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), the Federal Circuit interpreted 35 U.S.C. § 1011 and three Supreme Court cases as authorizing such a broad reading. In 2008, however, the same court in Bilski considered the same statute and cases and reached a different conclusion, limiting patent-eligible processes to ones either tied to a particular machine or apparatus or that transform a particular article into a different state or thing. To appreciate the issues and controversies requires an understanding of the difficulties that U.S. courts have had in addressing software-related inventions. For our purposes, we begin in the late 1960s. II. Three Decades of Confusion In re Prater, 415 F.2d 1393 (CCPA 1969),2 demonstrates how courts initially addressed claims to software inventions. The USPTO had rejected claims to a method and apparatus for processing spectrographic data for analysis under 35 U.S.C. § 101. Th...See the full content of this document
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