US Supreme Court Decides in Bilski - Business Methods Still Patentable Subject Matter

The US Supreme Court today decided in Bilski et al. v. Kappos, that business method patents are eligible subject matter under Section 101 of the Patent Statute 35 USC.

Oral arguments were presented on this case in November of last year and the decision has been eagerly awaited by the Patent Bar and by many in the public.

The Court rejected the Federal Circuit's an exclusive machine or transformation test, but instead affirmed the Federal Circuit's decision based on the subject matter being an abstract idea.  The claimed subject matter involved a procedure for instructing buyers and sellers how to protect against the risk of price fluctuations in a discrete segment of economy.

The majority of the Court supported the following language:

"Today, the Court once again declines to impose limitations on the Patent Act that are inconsistent with the Act’s text. The patent application here can be rejected under our precedents on the unpatentability of abstract ideas. The Court, therefore, need not define further what constitutes a patentable “process,” beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook, and Diehr.

"And nothing in today’s opinion should be read as endorsing interpretations of §101 that the Court of Appeals for the Federal Circuit has used in the past. See, e.g., State Street, 149 F. 3d, at 1373; AT&T Corp., 172 F. 3d, at 1357. It may be that the Court of Appeals thought it needed to make the machine-or-transformation test exclusive precisely because its case law had not adequately identified less extreme means of restricting business method patents, including (but not limited to) application of our opinions in Benson, Flook, and Diehr. In disapproving an exclusive machine-or-transformation test, we by no means foreclose the Federal Circuit’s development of other limiting criteria that further the purposes of the Patent Act and are not inconsistent with its text."


This case brings us back to the analysis provided in Benson, Flook and Diehr and it will be interesting to see how the invitation from the Supreme Court to the Federal Circuit to develop "limiting criteria" to evaluate patentable subject matter is treated in future Federal Circuit cases.

A copy of the Bilski opinion is located here.

Inventive Eats: Incredible Food Innovations Now on Display at the USPTO

The US Patent and Trademark Office ("USPTO") opened a new exhibit yesterday at the Inventor's Hall of Fame, at the Madison Building in Alexandria, Virginia.  The exhibit is the first major exhibit installation to come to the Hall of Fame since it was relocated to Alexandria from Akron, Ohio in 2009.

The exhibit shows how our breakfast cereals, sandwiches, dinner entrees, and more have been transformed by significant events, discoveries and inventions.  It features the important role many of the National Inventors Hall of Fame inductees have played in the array of appetizing innovations that have made the food we eat safer, healthier and more economical.

The exhibit includes:

A full-size Mr. Peanut® character costume from the 1960s, used for Planters marketing, and additional Mr. Peanut artifacts

• A 1950s fully stocked walk-in kitchen
• 19th century patent models, including models of a refrigerator, an egg beater, a flour sifter, and the original Mason jar
• Displays of other well-known trademark food characters, such as the Pillsbury Doughboy® and the Green Giant®
• A Tappan vintage microwave from 1955, the first for home use
• A 19th century patented beehive

If you are near Washingon, DC or Northern Virginia consider stopping by the Inventors Hall of Fame!

USPTO Teams up With Google to Provide Free Patent Information

The United States and Trademark Office ("USPTO") announced last week that it has entered into a no-cost, two-year agreement with Google to make bulk electronic patent and trademark public data available to the public in bulk form.   Under this agreement, the USPTO is providing Google with existing bulk, electronic files, which Google will host without modification for the public free of charge.   This bulk data can be accessed at http://www.google.com/googlebooks/uspto.html.

 This arrangement is to serve as a bridge as the USPTO develops an acquisition strategy which will allow the USPTO to enter into a contract with a contractor to retrieve and distribute USPTO patent and trademark bulk public data.  The contractor will be capable of acquiring this bulk data and providing it to the public.

Until now, USPTO’s public data in bulk form has been provided solely as a fee-based service. The USPTO estimates that nearly ten terabytes of information will be made available.  Examples of the type of data that will be available through Google include:
 *   Patent grants and published applications
 *   Trademark applications
 *   Trademark Trial and Appeal Board (TTAB) proceedings
 *   Patent classification information
 *   Patent maintenance fee events
 *   Patent and Trademark assignments

Patent searching data, however, is still difficult and inefficient to search on the USPTO website and a new searching engine is not a part of the Google deal.  For patent searching purposes, for example to determine patentability, right to use, validity or infringement, a search is most efficiently and effectively performed at the USPTO Public Search facility in Alexandria, Virginia.  Contact our office for more information about searching, applications, or enforcement assistance.

USPTO Expands Green Technology Pilot Program to More Classes of Inventions

The United States Patent and Trademark Office ("USPTO") has announced that it is revising its Green Technology Pilot Program to allow more categories of technology to be eligible for expedited processing under the program.  Eligibility for the pilot program, which was designed to promote the development of green technologies, had previously been limited to applications within a select number of U.S. classifications.  Inventions are classified at the USPTO according to what is known as the Manual of Classification.  The USPTO has now removed that requirement. By allowing more inventions related to green technologies to be accorded special status and receive expedited examination, the Green Technology Pilot Program will accelerate the development and deployment of green technology, create more green jobs and promote U.S. competitiveness in this vital sector.


Under the Green Technology Pilot Program, pending patent applications in green technologies are eligible to be accorded special status and given expedited examination.  Patent applications are normally taken up for examination in the order that they are filed. Under the pilot program, for the first 3,000 applications related to green technologies in which a grantable petition is filed, the agency will examine the applications on an expedited basis. 
When the Green Technology Pilot Program was announced in December 2009, the program was limited to inventions in certain classifications in order to assist the USPTO in balancing the additional workload and to gauge the resources needed for the program.  The USPTO has determined that the classification requirement is unnecessary because the workload has been balanced with other mechanisms, and the requirement was causing the denial of petitions for a number of green technology applications that would have otherwise qualified for the program.  

To date, more than 950 requests have been filed by applicants who wish for their application to be eligible for the Green Technology Pilot Program.  Only 342 of those have been granted, primarily because many of the inventions weren’t in classifications that were eligible.  The lifting of the classification requirements is expected to allow many more applications to be eligible for the program.

The full announcement is available here.