In Re Bernard L. Bilski and Rand A. Warsaw

Order Granting A Hearing En Banc


In re Bilski is an appellate court case that called into question business method patents and curtailed efforts to claim monopolies on basic human skills, behaviors, and interactions. Bilski challenged the rejection of his application for a patent on a method of managing the risk of bad weather through commodities trading. EFF submitted an amicus brief (in conjunction with The Samuelson Law, Technology & Public Policy Clinic at UC Berkeley Law, Public Knowledge, and Consumers Union) supporting the rejection of Bilski's patent application and setting forth a framework for determining patentable subject matter that focuses on the use of technology in the claimed invention.

The Court of Appeals for the Federal Circuit, which hears all patent case appeals, took the somewhat unusual step of ordering an en banc rehearing of the In re Bilski case. EFF's brief proposed that the patent office and the courts should determine whether an invention is technological before even considering it for patent protection and lays out a set of factors to help make that determination. This litmus test would have helped ensure that the patent system is not used to monopolize everyday interactions and other human behaviors. It would have also provided a more intuitive demarcation of patentable subject matter so that innovators and the general public can avoid infringement.

While the Federal Circuit did not adopt EFF's proposed test, it did impose firm limits on business method patents. Upholding the Patent Office?s rejection of Bilski?s application, the Federal Circuit held (in line with Supreme Court precedent) that processes can be patented only if they are implemented by a machine or transformed something into a new or different thing....

This is the Order of the United States Court of Appeals for the Federal Circuit granting hearing en banc.

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Reference Info:Decision | Federal, Federal Circuit | United States

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