Tuesday, May 12, 2009

Business Methods, Common Sense and Claim Drafting

The United States Court of Appeals for the Federal Circuit (CAFC) has come down on the side of common sense in its recent ruling: In re Bernard L. Bilski and Rand A. Warsaw (Bilski).

The case concerned a method for hedging risk in the field of commodities trading. The issue before the court was whether the subject matter as claimed in the patent application (serial no. 08/833,892) was the kind of subject matter that is protectable by patent (in patent legal jargon, the court ruled as to whether the claimed subject matter was statutory under 35 U.S.C. § 101).

The CAFC evaluated the claimed method and based on a “machine or transformation” test decided the method was not the sort of thing that should be patentable.

Novelty and Obviousness

The most significant hurdles to overcome when considering patentability are the requirements of novelty and obviousness. While it is usually fairly straightforward to determine novelty, obviousness can be more difficult to ascertain. Although objective criteria are utilized to determine obviousness, the weighing of the objective criteria ultimately requires subjective judgement, making it impossible to accurately predict in every case which inventions will ultimately be deemed patentable by the U.S. Patent and Trademark Office (USPTO) and by the courts.