During and after attendance this week at the TiE Midwest event on Growth Opportunities in Financial Technologies, Ron May asked me about the “patentable subject matter” case I mentioned in my question to the panel.  The Court of Appeals for the Federal Circuit should decide In re Bilski within a few months.  The case reviews a business method patent claim that had been rejected (2.7MB) by the patent office under 35 U.S.C. § 101 as ineligible for patent protection by being directed to nonstatutory subject matter.  Bilski’s claimed invention involves hedging the consumption risks associated with a commodity sold at a fixed price.

On February 15, 2008 the Federal Circuit requested briefing of five issues.  In a nutshell, the Federal Circuit is taking another look at its 1998 decision State Street Bank & Trust Co. v. Signature Financial Group, Inc. which had said:

The repetitive use of the expansive term “any” in § 101 shows Congress’s intent not to place any restrictions on the subject matter for which a patent may be obtained beyond those specifically recited in § 101. Indeed, the Supreme Court has acknowledged that Congress intended § 101 to extend to “anything under the sun that is made by man.”

Oral argument took place on May 8, 2008; listen to MP3, at Caption enter “Bilski”. The case is high-profile.

Text Copyright © 2008 Bob Brill

Bilski · The May Report · TiE Midwest