IP Master Class: Business Method Patents to be Reconsidered by Federal Circuit En Banc

On February 15, 2008, the Federal Circuit granted a hearing en banc opening up reconsideration of its 1998 decision in State Street Bank & Trust Co. v. Signature Financial Group, Inc., which opened the door to business method patents. The Federal Circuit has invited briefs as to what standards or guidelines for patentable subject matter should be applied to intangible mental processes, abstract ideas, and software.

The appeal of the BPAI’s decision in In Re Bernard L. Bilski and Rand A. Warsaw was originally argued at the Federal Circuit on October 1, 2007. In its February 15, 2008 order, the Federal Circuit has identified a fundamental set of questions to be addressed by the parties to the appeal and amicus briefs:

1. Whether the Bilski 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 and AT&T Corp. v. Excel Communications, Inc. in this case and, if so, whether those cases should be overruled in any respect.

This presentation is intended to help you understand the patent application, the BPAI opinion, the original briefs on appeal, and the supplemental briefs to be filed on March 6, 2008. Amicus briefs are due April 7, and oral argument at the Federal Circuit will be on May 8, 2008.