Business Methods and Bilski: the Wait is (almost) Over

Anybody interested in patents, and the patentability of inventions in different sectors of commerce, would have to have been living under a rock for the past few years not to be aware of In Re Bilski.  We have been waiting since last November for the US Supreme Court to issue its decision in this case.  It is widely anticipated that the Court will find Biski's claims (which relate to a "pure" business method, requiring no use of a computer or other technology) to be unpatentable, upholding the adverse decisions already issued by the USPTO and the Federal Circuit.  However, interest in the case is focused on the likelihood that the Supreme Court took on the Bilski case in order to clarify the "rules" distinguishing the types of invention that are legitimate subjects of patent protection from those that are not.

The decision is expected to impact upon the patentability of inventions in various fields of technology, including computer software, e-commerce, financial services, and methods of medical treatment, testing and diagnosis.

Last Thursday, the Supreme Court indicated that the final outstanding decisions of the current term would be handed down on Monday, 28 June 2010.  Since Bilski is one of only four cases heard during the term in which a decision is yet to issue, we expect that by this tomorrow morning (29 June, Australian time) we will know the outcome.

Despite our great interest in the case, Patentology will not be joining the countless numbers of blogs, newsletters, media outlets and legal firms that will doubtless be analysing and commenting on Bilski over the coming days and weeks.  There are others better-placed to do so.  We will, however, let you know about any other articles or commentaries on the case that we come across, and that we find to be useful and informative.

---

Before You Go…

Thank you for reading this article to the end – I hope you enjoyed it, and found it useful.  Almost every article I post here takes a few hours of my time to research and write, and I have never felt the need to ask for anything in return.

But now – for the first, and perhaps only, time – I am asking for a favour.  If you are a patent attorney, examiner, or other professional who is experienced in reading and interpreting patent claims, I could really use your help with my PhD research.  My project involves applying artificial intelligence to analyse patent claim scope systematically, with the goal of better understanding how different legal and regulatory choices influence the boundaries of patent protection.  But I need data to train my models, and that is where you can potentially assist me.  If every qualified person who reads this request could spare just a couple of hours over the next few weeks, I could gather all the data I need.

The task itself is straightforward and web-based – I am asking participants to compare pairs of patent claims and evaluate their relative scope, using an online application that I have designed and implemented over the past few months.  No special knowledge is required beyond the ability to read and understand patent claims in technical fields with which you are familiar.  You might even find it to be fun!

There is more information on the project website, at claimscopeproject.net.  In particular, you can read:

1. a detailed description of the study, its goals and benefits; and
2. instructions for the use of the online claim comparison application.

Thank you for considering this request!

Mark Summerfield

Tags: Patentable subject matter, US