In Bilski v. Kappos, the Supreme Court Rejects Machine–or–Transformation as the Sole Test
On June 28, 2010, the U.S. Supreme Court handed down its decision affirming the Federal Circuit ruling that the Bilski invention is not patent eligible under 35 U.S.C. § 101 but stating that the machine-or-transformation test is not the sole test for patent eligibility. This decision will significantly impact the ability of companies to pursue business method patents in a variety of technology areas, including software, financial services, insurance, and life sciences.
Foley's John Gutkoski, John Garvey, and Marc Henschke hosted a Foley Executive Briefing Series program, during which in-house corporate counsel and Foley counsel provided perspective on the Supreme Court's decision on the Bilski case. During this interactive program, panelists conveyed key insights on the impact of the decision and provided practical steps for moving forward with business method patents.
Discussion topics included:
- What are the implications of the Supreme Court’s decision and has appropriate guidance been provided to lower courts and the USPTO?
- What types of innovations remain patent eligible?
- What does the test imply for existing patent applications?
- What drafting techniques should be employed in preparing new patent applications?
- How will litigation involving business method patents be impacted?
- How should license agreements be structured to maximize revenue?
"What Now for Patent Eligibility?" is part of the Foley Executive Briefing Series. Learn more about programs in the series at Foley.com/FEBS.