In Re Bilski Decision Clarifies Criteria Requiredfor Process Claims, Including Business Methods and Computer Software Claims

摘要

On October 30, 2008, the United States Court of Appeals for the Federal Circuit handed down its holding in the In Re Bilski case, which has been much anticipated because of the potential effect on the patentability of business method and computer software inventions. While these types of inventions still are patentable, per se, the court has provided some guidance on what will constitute patent-eligible subject matter in these areas going forward, but still left important questions for future cases. This decision was rendered en banc, superseding all prior inconsistent precedent of the Federal Circuit. The claim under scrutiny in Bilski is a claim for a method of hedging risk in the field of commodity trading. The process, as claimed, encompasses the exchange of only-options, which are simply legal rights to purchase some commodity at a given price in a given time period. As such, the true issue before the court was whether the applicants were seeking to claim a fundamental principle (such as an abstract idea) or a mental process. The underlying legal question thus presented is what test or criteria governs the determination by the United States Patent and Trademark Office or courts as to whether a claim to a process is patent-able under 3.5 U.S.C.A. § 101 (eligible for examination) or, conversely, is drawn to unpatentable subject matter because it claims only a fundamental principle.