Recommended Alerts

Sign Up For Alerts

Patent/PTAB Litigation Changes in Senator Leahy’s “Restoring the America Invents Act”

In 2011, Congress passed the Leahy-Smith America Invents Act (the “AIA”), implementing the most significant reformation to the U.S. patent system in over fifty years. Among the many changes of the AIA was the creation of the Patent Trial and Appeal Board (the “PTAB”). The PTAB serves as the judicial body of the United States Patent and Trademark Office (the “USPTO”) that adjudicates AIA trial proceedings of challenged patents. A decade later, one of the AIA’s namesakes, Senator Patrick Leahy – VT (D), is seeking to recalibrate practices that have evolved due to recent court decisions and PTAB directives that he sees as contrary to goals of the original AIA legislation. As such, Senator Leahy has introduced a new bill entitled the “Restoring the America Invents Act.”

Read More

With Decision to Hear Bilski, Supreme Court Leaves Business Method Patents in Limbo

Time to Read: 1 minutes Practices: Intellectual Property

Printer-Friendly Version

By granting today the petition for writ of certiorari in Bilski v. Doll, the U.S. Supreme Court has prolonged the period in which the Federal Circuit's "machine-or-transformation" test is subject to serious question. While the Federal Circuit's test for patent-eligible subject matter applies to all patent applications, any decision by the Supreme Court is likely to have its greatest impact in the areas of business methods, software, and life sciences.

The Federal Circuit has declared that the "machine-or-transformation" test is the only test for determining patent eligible subject matter under § 101 of the Patent Act. But three of the Supreme Court justices – Anthony Kennedy, Stephen Breyer, and John Paul Stevens – who will decide this case have expressed concerns regarding the eligibility of business methods for patent protection. It would seem that at least some of those concerns were not alleviated by the Federal Circuit's "machine-or-transformation" test.

The petition presented the following issue: whether a "process" must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (the "machine-or-transformation" test), to be eligible for patenting under 35 U.S.C. § 101, and whether the "machine-or-transformation" test for patent eligibility contradicts Congressional intent that patents protect "method[s] of doing business" in 35 U.S.C. § 273.

The most immediate effect of the Supreme Court's action today is to leave in doubt the status of the "machine-or-transformation" test, which has been applied to ongoing patent cases at the Federal Circuit, in the federal district courts, and at the Patent Office. If you have any questions about today's development, please contact your usual Ropes & Gray adviser.

Printer-Friendly Version

Cookie Settings