Arguments close in the US Supreme Court over business method patents

Yesterday, the US Supreme Court heard oral arguments from both sides in Bilski v Kappos over whether American law should permit patents for business methods.

Since June 2009, Mallesons IP Whiteboard has closely followed the progress of Bernard Bilski and his fight with the US Patent and Trademark Office (“USPTO”) in relation to whether he is able to patent a business method for structuring transactions to protect against weather-related risk.  Mr Bilski’s patent application was originally rejected by the USPTO as not being patentable subject matter under 35 USC 101.  The Court of Appeals of the Federal Circuit agreed, holding that the claims of the application did not satisfy the “machine-or-transformation test” as they did not require the use of a machine or “transform any article to a different state or thing”. Click here to read our previous post.

Since Mr Bilski’s petition for a writ of certiorari was granted by the US Supreme Court on 1 June 2009, over 70 amicus curiae briefs have been filed and the case, described as “the most important patent case in 50 years”, has attracted intense interest from lawyers, academics, businesses and the public.

The Supreme Court’s decision is expected to be handed down in mid-2010 and will have a major impact on the direction of US patent law in coming years.  Although the case is specific to the US, it is probable that an Australian court will look to Bilski v Kappos for guidance the next time it is asked to decide whether a business method is patentable under Australian law.

Watch this space for future developments!

About the Author

James Ellsmore
James is a senior associate with King & Wood Mallesons' Intellectual Property team in Sydney. James assists clients to resolve intellectual property disputes, with a particular focus on patents, pharmaceuticals and the life sciences. He has acted for a variety of clients in matters concerning patent infringement and revocation proceedings in the Federal Court of Australia, patent opposition proceedings before the Commissioner of Patents, and matters arising from patent licence and technology agreements. James also has experience in the preparation of commercial, R&D and IP agreements for leading universities, research organisations and pharmaceutical companies. He also advises clients on regulatory issues affecting clients in the industrials, consumer and health sectors.
View all posts by James Ellsmore

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