Patentability in the USA after Bilski

For more recent case law, see Patentability in the USA after Alice

In the courts

• Explaining Patentable Subject Matter: The First Bilski Test Cases, 7 July, 2010
  • Bilski could be interpreted by the CAFC in RTC v. Microsoft, in re Bonnstetter, and Accenture Global Servs. GmbH v. Guidewire Software
• Bilski to be Expanded in RCT v. Microsoft, 25 July, 2010
  • Suggests that RTC v. Microsoft will interpret Bilski, but also mentions seven other cases: CyberSource, Fort Properties, DealerTrack, FuzzySharp, Every Penny Counts, Prometheus, and Classen (their full names weren't given)
• CLS Bank Int'l v. Alice Corp. (D.D.C. 2011)
  • District court rules that a computer system is not patentable subject matter

CAFC and Supremes on Ferguson v. Kappos

As pointed out by the USPTO in their interim Guidance:
(Note: "leaving intact" does not necessarily imply an endorsement.)

The day after deciding Bilski, the Supreme Court denied certiorari in Ferguson v. Kappos, U.S. Supreme Court No. 09­1501, while granting, vacating, and remanding two other Federal Circuit section 101 cases. The denial of certiorari left intact the rejection of all of Ferguson’s claims. Although the Federal Circuit had applied the machine-or-transformation test to reject Ferguson’s process claims, the Supreme Court’s disposition of Ferguson makes it likely that the Ferguson claims also run afoul of the abstract idea exception. A representative Ferguson claim is:

1. A method of marketing a product, comprising:

Developing a shared marketing force, said shared marketing force including at least marketing channels, which enable marketing a number of related products;

Using said shared marketing force to market a plurality of different products that are made by a plurality of different autonomous producing company [sic], so that different autonomous companies, having different ownerships, respectively produce said related products;

Obtaining a share of total profits from each of said plurality of different autonomous producing companies in return for said using; and

Obtaining an exclusive right to market each of said plurality of products in return for said using.

At the USPTO

At the USPTO patent examiners and by the Board of Patent Appeals and Interferences.

• First BPAI decision after Bilski v. Kappos, 11 July, 2010
  • Groklaw analysis: Sanity From the 1st Post-Bilski Decision from BPAI: In Re Proudler, 1 July, 2010
  • First BPAI Decision Citing Bilski v. Kappos, 12 July, 2010

• Article: USPTO Must Amend Examiner Guidelines On Bilski, 22 July, 2010, by Paul Craane

The first certainty: Bilski's idea isn't patentable

Let's not forget the obvious. Bilski v. Kappos resulted in the rejection of the patentability of Bilski's patent application text.

Related pages on ESP Wiki

• USA patent courts and appeals
• Mayo ruling by US Supreme Court on 20 March 2012
• Particular machine or transformation

External links

• Is software too abstract to be patented?, 18 Nov 2010, Rob Tiller (Red Hat)
• Research Corp. v. Microsoft: Section 101 and Process Claims, 8 Dec 2010, Patently-O
• Bilski Applied to Invalidate Computer System Claims, 18 Mar 2011, Patently-O
• If the software method is not patentable, then neither is the “computer readable medium”, 16 Aug 2011, Patently-O
• Patentable subject matter and preemption, 28 Jan 2012, IPEG