Patents

Bilski: What’s at Stake, Part 4

This series discusses the recent appeal to the Supreme Court of In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), cert. granted, 129 S.Ct. 2735 (2009). Bilski raises the issue of what constitutes a patentable process under 35 U.S.C. § 101.

Part 4: How the Supreme Court Should Rule

While the machine-or-transformation test may be one useful way to determine whether a patent application recites claims for a patent-eligible process, the Supreme Court should hold that this is not the exclusive test. Instead, the Court should affirm the rule from Diamond v. Diehr, 450 U.S. 175 (1981), that any “process” is patent-eligible under § 101 unless it claims “laws of nature, natural phenomena, [or] abstract ideas.” Furthermore, even if a process does claim a fundamental principle, it may be patent-eligible under § 101 if it claims a “practical application” of a fundamental principle. However, beyond this formulation, the Court should refrain from adopting one particular test to determine whether something is a “process” within the meaning of § 101 for three main reasons. Continue reading »

Microsoft's Stuggles With The Little "x" In "docx"

By Alayna Ness

I don’t know about the rest of you, but when I first saw the headline just before the holidays that Microsoft Word sales were prohibited as of January 11, 2010, I was more concerned about what this would mean for me than I was about what it would mean for Microsoft. After all, like millions of other Americans, I have been using Word for years, whether to draft papers, or blogs, or most importantly these days, to take class notes. My fourth semester of law school was starting on January 11, and now I needed to worry about how I would take notes in my Legislative and Administrative Law course? Continue reading »

One Box, Two Buttons, and Lots of IP Rights: Google’s Design Patent on its Search Page Interface

By Arlene Mu

On September 1, 2009, Google received a design patent on its familiar search page interface (Pat. No. D. 599,372). The awarded design patent covers the “ornamental design for a graphical user interface … as shown and described.” The dashed lines indicate features that are not claimed. In addition to the design patent, there is a circle-c © at the bottom of the design patent drawing, which indicates that Google is also claiming copyright protection for this layout. Moreover, in the design patent, Google indicates that it is also claiming trademark protection for portions of or possibly, the whole layout. Continue reading »

Bilski: What’s at Stake, Part 3

This series discusses the recent appeal to the Supreme Court of In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), cert. granted, 129 S.Ct. 2735 (2009). Bilski raises the issue of what constitutes a patentable process under 35 U.S.C. § 101.

Part 3: A Brief Overview of the US Patent & Trademark Office’s Arguments

This post provides an overview of the central arguments from the USPTO’s brief to the Supreme Court. According to the USPTO, the Federal Circuit correctly adopted the mandatory machine-or-transformation test and rejected Bilski’s patent application. The USPTO highlighted three main reasons why the Federal Circuit got it right. Continue reading »

Bilski: What’s At Stake, Part 2

This series discusses the recent appeal to the Supreme Court of In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), cert. granted, 129 S.Ct. 2735 (2009). Bilski raises the issue of what constitutes a patentable process under 35 U.S.C. § 101.

Part 2: A Brief Overview of Bilski’s Arguments

This post provides an overview of the main arguments from the petitioner’s brief to the Supreme Court. According to Bilski, the petitioner and patent applicant, the Federal Circuit erred by adopting the mandatory machine-or-transformation test and rejecting Bilski’s patent application. Bilski highlighted five main arguments for reversal of the Federal Circuit. Continue reading »

Bilski: What’s at Stake

This is the first of four posts discussing the issues in the controversial Bilski case. This first post will give a brief overview of In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), currently under review by the Supreme Court. Bilski raises the issue of what constitutes a patentable process under 35 U.S.C. § 101. The second and third posts will give a brief overview of the central arguments on each side of the appeal. The fourth and final post will discuss the highlights from oral argument, and will conclude with a discussion of what is ultimately at stake in the Supreme Court’s decision.

Part 1: Background and The Federal Circuit’s Decision

According to § 101, the first step in determining whether a claimed invention is patent-eligible involves an assessment of whether the invention is a “new and useful process, machine, manufacture, or composition of matter.”

Last year, the Federal Circuit was called upon to decide whether a particular applicant’s claimed business method qualified as a patentable “process” under § 101 in Bilski. Prior to Bilski, courts had applied various tests to determine what constitutes patentable subject matter under § 101. For example, a claimed invention could be patentable under § 101 if it transformed an article or physical object to a different state or thing, or if it otherwise produced a “useful, concrete and tangible result.” See State St. Bank & Tr. v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir. 1998). However, the Federal Circuit rejected this test, along with several others, in Bilski, and instead adopted the “machine-or-transformation” test as the exclusive test for all process claims. Continue reading »