In Re Bilski Blog

Webinar on Bilski: Strategies for Prosecuting or Challenging Patent Process Claims Going Forward

Strafford will be offering a webinar entitled "Bilski:  Implications of the Supreme Court's Long-Awaited Ruling:  Strategies for Prosecuting or Challenging Patent Process Claims Going Forward" on August 11, 2010, 2010 from 1:00 - 2:30 PM (EDT).  Erika H. Arner of Finnegan Henderson Farabow Garrett & Dunner; Leigh J. Martinson of McDermott Will & Emery LLP, Boston; and Daniel R. Brownstone of Fenwick & West LLP will provide guidance for counsel and companies concerning the implications of the Supreme Court's recent decision in Bilski v. Kappos, and outline best practices for defending patent applications -- or challenging them --given the continuing lack of clear guidelines for patentability.  The webinar will review the following questions:

• What are the implications of Bilski for patent eligibility?
• What is its anticipated impact for past patent eligibility decisions?
• What strategies should patent applicants employ to improve the likelihood of a successful patent application going forward?
• What are the best practices for challenging patents following the Bilski decision? 

 The registration fee for the webinar is $297 ($362 for registration and CLE processing).  Those registering by July 23, 2010 will receive a $50 discount.  Those interested in registering for the webinar, can do so here.

Strafford will be offering a webinar entitled "Bilski:  Implications of the Supreme Court's Long-Awaited Ruling:  Strategies for Prosecuting or Challenging Patent Process Claims Going Forward" on August 11, 2010, 2010 from 1:00 - 2:30 PM (EDT).  Erika H. Arner of Finnegan Henderson Farabow Garrett & Dunner; Leigh J. Martinson of McDermott Will & Emery LLP, Boston; and Daniel R. Brownstone of Fenwick & West LLP will provide guidance for counsel and companies concerning the implications of the Supreme Court's recent decision in Bilski v. Kappos, and outline best practices for defending patent applications -- or challenging them --given the continuing lack of clear guidelines for patentability.  The webinar will review the following questions:

• What are the implications of Bilski for patent eligibility?
• What is its anticipated impact for past patent eligibility decisions?
• What strategies should patent applicants employ to improve the likelihood of a successful patent application going forward?
• What are the best practices for challenging patents following the Bilski decision? 

 The registration fee for the webinar is $297 ($362 for registration and CLE processing).  Those registering by July 23, 2010 will receive a $50 discount.  Those interested in registering for the webinar, can do so here.

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.

New Director Kappos to Address IPO at Annual Meeting

On September 14, the new Director of the USPTO, David Kappos, will address the IP Owners Association at its annual meeting.  Kappos is widely expected to address changes he intends to implement now that he has been confirmed in his new position.  It will be interesting to see whether he chooses to comment on the likely position of the Government in the Bilski case.  The Government's brief is due at the end of September.

USPTO Invites Public Comments on Patent-Eligible Subject Matter Guidelines

On August 27, the USPTO posted a notice inviting public comments on the “Interim Eligibility Instructions” for evaluating patent subject matter eligibility that were issued to patent examiners on August 24.  Comments are due by September 28.

This is getting interesting, as the new director also posted instructions to PTO staff last week that a thorough examination did not equate with just rejecting cases. 

USPTO Issues Interim Guidelines to Patent Examiners on Patent-Eligible Subject Matter

On August 24 the USPTO published interim guidelines for its patent examiners on patent-eligible subject matter under the Bilski case.  The guidelines include 8 pages of instructions and first and second accompanying flow charts.  They are interim guidelines because the U.S. Supreme Court has agreed to review the Federal Circuit decision in Bilski and has scheduled oral arguments for November 9.  The guidelines supersede instructions in the Manual of Patent Examining Procedure.

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.