In the Bilski case, a patent application for a method of hedging risks in commodities trading was rejected by the examiner and review board. The patent examiner rejected the application on the grounds that the invention is not implemented on a specific apparatus, and only manipulates an abstract idea which cannot be used in the technological arts. Bilski appealed to the Board of Patent Appeals and Interferences, which also rejected the application, but on the grounds that the applicants’ claims did not involve any patent-eligible transformation because there was no transformation of physical subject matter from one state to another, and non-physical financial risks do not qualify for patent-eligible subject matter. The Federal Court upheld the rejections of the Board, holding that the issue at hand is whether the method is patentable, and referred to previous Court decisions that determined that patent-eligible processes do not include abstract ideas. The Supreme Court will determine whether a “process” must be attached to a particular machine or apparatus or transform a particular object into a different state or object to be patentable and if the “machine-or-transformation” test for patent eligibility contradicts Congressional intent that patents protect “method[s] of doing business.” Joshua Sarnoff and Michael Risch will discuss this case, moderated by Adam Mossoff.
- Michael Risch, Associate Professor of Law, West Virginia University School of Law
- Joshua Sarnoff, Professor of the Practice of Law, American University’s Washington College of Law
- Moderator: Adam Mossoff, Associate Professor, George Mason University School of Law