In Re Bilski Blog

U.S. Solicitor General urges Supreme Court to affirm the Bilski decision

In a brief filed on Friday, September 25, Solicitor General Elena Kagan and her staff said that because a patent application filed by inventors Bernard Bilski and Rand Warsaw related solely to human conduct, untethered to any technology, it was not process eligible.

However, the government never really claims that the Bilski test should be the only test. Instead, they're focusing on the fact that human endeavors by themselves may not be appropriate for protection. The Solicitor General's brief didn't contain any ringing endorsement of, 'Oh, the Federal Circuit was absolutely right.'

In fact, it's a narrower brief than one might have seen if the government really loved the machine-or-transformation test. Perhaps this is because the Federal Circuit has been chastised several times by the Supreme Court in recent years for giving us tests that are too rigid.

Petitioner Briefs Submitted

We will be posting more information once briefs for the Respondent are submitted on September 25, 2009.

Welcome to the Fenwick & West Bilski Blog

Welcome to the Fenwick & West Bilski blog, focusing on the Supreme Court's review of In re Bilski.  Our objective is to identify and discuss key issues and strategies with people interested in the case, including parties who have submitted or are preparing amicus briefs. 

The Federal Circuit's decision in Bilski was a watershed event in the law of patentable subject matter.  The Supreme Court's review will be the first time in over 25 years that the Court has substantively addressed this area of law.  As a result, the Court's decision is going to impact a fundamental requirement of patent law—and hence ability of companies around the world to protect their technology.  The Court's decision will impact the value of existing patents, pending patent applications, and many pending patent litigations.   The value of patent protection as an incentive for innovation, as a defensive measure, and as a risk management policy will change as well.  Given the far-ranging consequences, many companies have filed amicus briefs in support of Mr. Bilski, or in support of neither party.  Other companies are planning to file or looking to join in the amicus briefs supporting the Solicitor General.

We look forward to your participation on the Bilski Blog.

The Federal Circuit's decision in Bilski was a watershed event in the law of patentable subject matter.  The Supreme Court's review will be the first time in over 25 years that the Court has substantively addressed this area of law.  As a result, the Court's decision is going to impact a fundamental requirement of patent law—and hence ability of companies around the world to protect their technology.  The Court's decision will impact the value of existing patents, pending patent applications, and many pending patent litigations.   The value of patent protection as an incentive for innovation, as a defensive measure, and as a risk management policy will change as well.  Given the far-ranging consequences, many companies have filed amicus briefs in support of Mr. Bilski, or in support of neither party.  Other companies are planning to file or looking to join in the amicus briefs supporting the Solicitor General.

We look forward to your participation on the Bilski Blog.