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October 30, 2008


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The opinion just reduced the problem of backlogs in the examining docket of the USPTO - issue scores of rejections, citing KSR and Bilski.
One of the Pandoras released by State Street was that other nations followed its lead, and began to accept methods of doing business for patentability. Now, how can that be forced back into the box? If bank transactions are being cleared, using an issued PCT patent for a non-machine-driven, not transformative method of doing business, then it does not seem that Bilski invalidates that patent globally.


Wait a minute, "business method patents" still works for patent eligibility under Bilski.

Machine implimentation test is still alive. Page 24 : " As to machine implementation, Applicants themselves admit that the language of claim 1 does not limit any process step to any specific machine or apparatus. See Appellants' Br. at 11. As a result, issues specific to the machine implementation part of the test are not before us today. We leave to future cases the elaboration of the precise contours of machine implementation, as well as the answers to particular questions, such as whether or when recitation of a computer suffices to tie a process claim to a particular machine."

A "Business Methods" rejection is still not allowed. The court modified, but did not overrule State Street Bank. Page 21: " We further reject calls for categorical exclusions beyond those for fundamental principles already identified by the Supreme Court. We rejected just such an exclusion in State Street, noting that the so-called "business method exception" was unlawful and that business method claims (and indeed all process claims) are "subject to the same legal requirements for patentability as applied to any other process or method." 149 F.3d at 1375-76. We reaffirm this conclusion."

Let's applaud Bilski for further explaining the same old rules about 101 rejections, but lets not call it the death of business methods quite yet!


I think Prof. Picker understates the impact of the Bilski majority opinion, if left to stand. The opinion that it “carefully comes to the line without crossing over it” might seem to be supported by statements like: “we see no reason here to expand the boundaries of what constitutes patent-eligible transformations of articles.”

But, apparently, the Circuit Court saw a reason to narrow these boundaries, in rejecting transformations of abstract data as ineligible “because they are not physical objects or substances, and they are not representative of physical objects or substances.” Like cured rubber and such.

This Bilski decision also seems to break new ground in declaring that the machine-or-transformation test is mandatory for a process claim. In both Gottschalk v. Benson and Parker v. Flook the Supreme Court clearly takes the position that a patentable process could exist outside of this test. The fact that this position was not repeated in their Diamond v. Diehr decision was because the test in that case was used to prove eligibility, not disprove it. This fits perfectly well with their position that passing the machine-or-transformation test is sufficient, but not necessary. I think Prof. Picker lets the Circuit Court off real easy with his comment that their rejection of the Supreme Court’s stated position “hardly seems dispositive.”

If one wants to go fishing for hints in Gottschalk v. Benson as to what other eligibility criteria that the Supreme Court might find acceptable, one might look to their statement that the rejected claims were also not limited to any particular art or technology, or to any particular end use.

I can’t even guess how many patents have issued since the 1980s for processes that transform abstract data in a general purpose computer.

Jonathan Richards

I agree that this was a remedy to reduce the plethora of backlogs. Citing KSR and Bilski was simply a means of elimination rather than a genuine attempt to implement the rule of law.

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