New Restrictions On The Patentability Of Process Claims: Looking Beyond In Re Bilski

摘要

The Federal Circuit's In re Bilski decision is part of a recent trend toward tightening the patentability standard in § 101 to correct the most egregious problems associated with process claims. However, the Bilski decision is limited in that it addresses the appropriate patentability test only for process claims. To give Bilski meaningful effect, patent practitioners should consider how the tests that it articulates will be applied to pseudo-process claims. At a minimum, this requires patent applicants and attorneys to assume that "illusory" apparatus claims are not immune to the patentability requirements set forth in In re Bilski.rnTo avoid pitfalls associated with § 101, we suggest keeping the following points in mind. First, claims should be structured to emphasize particular machine implementations or the physical results of claimed processes. For product claims that are linked to an underlying method, the claim should do more than merely recite generalized structure for carrying out the method. Instead, product claims should link particular structural limitations to the underlying method.rnSecond, applicants should consider the importance of drafting the specification -in a manner that provides a detailed description of specific uses of a fundamental principle. This would assist in supporting more particularized claims, and even broad means-plus-function claims, and avoid the appearance of trying to cover all possible uses of the principle. Alternatively, applicants may need to file additional applications to cover numerous implementations of certain process-based inventions to avoid claims that potentially cover all uses of a fundamental principle.rnThird and finally, applicants and their attorneys should realistically assess the patentability of claims under § 101. If it seems that the claims may not be patentable under § 101, the claims should be redrafted to include meaningful limits, or other claims should be added that are narrower in scope.