Federal Appeals Court Decision May Cut Back on Business Method Patents
Price, Marie, THE JOURNAL RECORD
A lengthy federal appeals court decision issued Thursday may cut back on the issuance of patents for business methods, such as some online shopping systems and other less-tangible concepts.
Oklahoma City attorney Chad McLawhorn said the federal circuit's ruling in Bilski sees as inadequate the 1998 State Street opinion that broadened what could be considered eligible for a patent.
Bilski is being treated by some legal bloggers as a substantial curtailment on the patentability of business methods.
Bilski involved the federal patent office's rejection of a patent application for a method of managing consumption risk costs of a commodity sold by a provider at a fixed price.
McLawhorn said Bilski dealt with what "process" means in terms of patentability, and how to determine whether a given claim involves a new and useful process.
The U.S. Supreme Court has held that a process is patentable if it is tied to a particular machine or transforms a particular article into a different state of being.
"That's really what the federal circuit goes back to," said McLawhorn, who is with McAfee and Taft. "In Bilski, the federal circuit says the 'useful, concrete and tangible result' test of State Street is inadequate. They clearly say that's not the correct test."
The appellate court said the test cannot include merely insignificant, "post-solution" activity.
McLawhorn explained that term to mean that something insignificant added at the end of a process, which really adds nothing to it, cannot serve to make it patentable. …