Business Method Patents

As the law currently stands, business methods remain patentable. The Supreme Court, in the landmark case Bilski v Kappos, determined that business methods are patentable provided they satisfy the other requirements of patent law. Therefore, business methods will not be awarded a patent if they simply claim an abstract idea. The Supreme Court did not clearly define the concept of “abstract idea” but recently the Federal Circuit has provided some guidance on the idea. Maier & Maier continues to remain abreast of any developments or clarifications that the courts have and will provide regarding any developments relating to patent law.

Specifically, with regard to business methods, the Federal Circuit has clarified the notion of an abstract idea in both Prometheus v. Mayo, 2008-1403 (Fed. Cir. Dec. 17, 2010) an RCT v. Microsoft, 2010-1037 (Fed. Cir. Dec. 8, 2010). In Prometheus, the Federal Circuit held that a method for administering and subsequently determining the level of toxicity caused by a drug, 6-MP was patent-eligible under §101. The court determined that this method was not claiming a natural phenomenon, but instead claiming a particular application of a natural phenomenon. Further, the Federal Circuit found that the claims at hand recite transformative “administering” and “determining” steps that satisfy the machine-or-transformation test, thus providing a an important clue that the method satisfies §101. Meanwhile, in RCT, the Federal Circuit refrained from applying the machine-or-transformation test, and instead found the methods for digital halftoning to be patent-eligible because they were “functional and palpable applications in the field of computer technology.” The court reasoned that an invention providing such a contribution to the field of computer technology could not be so abstract, as to be beyond the vast, but limited, scope of §101.

For a more extensive overview of the developments regarding business methods in the wake of Bilski, please click here