Business Methods – here we go again

You may have noticed the following in last week’s Global Week in Review:

So an en banc (ie Full) court of the US Court of Appeals for the Federal Circuit is going to give us some guidance on the all important issuesof patentability and scope of business method patents in the US.  There’s only one place to go in the US after that – the US Supreme Court.  Here are the questions up for Appeal:

  1. Whether claim 1 of the 08/833,892 patent application claims patent-eligible subject matter under 35 U.S.C. § 101?
  2. What standard should govern in determining whether a process is patent-eligible subject matter under section 101?
  3. Whether the claimed subject matter is not patent-eligible because
    it constitutes an abstract idea or mental process; when does a claim
    that contains both mental and physical steps create patent-eligible
    subject matter?
  4. Whether a method or process must result in a physical
    transformation of an article or be tied to a machine to be
    patent-eligible subject matter under section 101? 
  5. Whether it is appropriate to reconsider State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999), in this case and, if so, whether those cases should be overruled in any respect?

The way that the court answers Questions 2-5 will have far reaching effects for many businesses around the world.  

So, what can you do about it?  Here’s some brief thoughts:

  • understand the worst and best possible scenarios that may come out of this case for you;
  • if you have one, then review your portfolio of business method patents for any specifications or claims which should be amended in light of the best and worst scenarious;
  • if you have (currently) patentable business method inventions and there’s no fear of invalidation in the mean time, then consider holding off until the decision is handed down and you and your attorney can craft a suitably adjusted specification and claims.

Anything else?

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