In re Bilski: The Case of a Strange Statute—or How the Federal Circuit Learned to Stop Worrying and Love the Supreme Court

In an apparent effort to head off another potential reversal by the U.S. Supreme Court, the U.S. Court of Appeals for the Federal Circuit in its October 30, 2008, en banc decision in In re Bilski sought to limit the patent eligibility of certain types of processes, especially those relating to certain types of software and so-called business methods.

This article begins with a review of the most recent Supreme Court decisions addressing statutory subject matter relating to mathematical algorithms, and provides observations on the Federal Circuit's subsequent efforts to determine patent-eligible subject matter under 35 U.S.C. § 101. Against this background, the author offers a detailed analysis of the Federal Circuit's decision in Bilski and concludes that while this decision may well affect certain existing patents and require the rethinking of claim strategies for many inventions, Bilski by no means marks the end of software or even business method patents, generally. Though it seems apparent that the Federal Circuit in Bilski sought to put forth a single, unifying test for establishing patent-eligible subject matter, it is questionable whether precedent truly dictated that the court's chosen test was mandated or even warranted. Read More...

Republished with permission of The Computer & Internet Lawyer, Volume 26, Number 2, February 2009.