In In re Bilski[1], a decision rendered by the U.S. Supreme Court on June 28, 2010, the Supreme Court held that business methods are not categorically outside of 35 U.S.C. §101. Still, the Supreme Court rejected the Bilski application under its precedents on the unpatentability of abstract ideas providing little further guidance on what constitutes a patentable “process” other than “pointing to the definition of the term in §100(b) and looking to the Benson, Flook, and Diehr precedent.” In re Bilski, No. 08-964, slip op. at 16.
The Benson precedent referred to by the Court is the holding that an algorithm is not a “process” but an unpatentable abstract idea. Id. at 13 A contrary holding “would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.” Id. at 13 In Flook, unlike the algorithm in Benson, the mathematical formula used for monitoring conditions during the catalytic conversion process in the petrochemical and oil-refining industries was limited so that it could still be freely used outside the petrochemical and oil-refining industries. Id. at 14 Nevertheless, the Flook Court rejected “[t]he notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process.” Id. at 14 As the Court later stated in Diehr, Flook stands for the proposition that the prohibition against patenting abstract ideas “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment” or adding “insignificant post solution activity”. Id. at 14. Finally, in Diehr involving a method for molding raw, uncured synthetic rubber into cured precision products using a mathematical formula to complete several of the steps by computer, the Court explained that “while an abstract idea, law of nature, or mathematical formula could not be patented, an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Id. at 14
In determining what business methods are not an abstract idea the Supreme Court has provided little guidance other than pointing to the definition of the term “process” in §100(b) and the trilogy precedent of the Court in Benson, Flook, and Diehr.”
As the Supreme Court noted “the patent law faces a great challenge in striking the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles”. Id. at 10 For today’s patent program to be successful, Companies must understand this balance and craft their business method claims so they are applied to structure or process defined by other than a limitation to a particular environment or by the addition of an insignificant post solution activity.
The Juhasz Burge PC Firm can help you to better understand this balance and the effect of Bilski on your claims, including, if you are a patent holder, helping you craft claims to better weather a 35 U.S.C. §101 statutory challenge, or, if you are dealing with a third party patent, providing you with strategic counseling to help you understand whether asserted claims likely meet or fail to satisfy the statutory subject matter standard.
Your patents may be your most important asset. To help you protect your patents contact Juhasz Burge PC, the firm committed to Positioning Your Patent Beyond The Horizon℠.
Posted by Paul R. Juhasz, President
[1] In re Bilski, No. 08-964, slip op. (S.Ct. Jun. 10, 2010); __ U.S. __ (2010).