The Bilski Impact: Procuring & Enforcing Software, Business Methods & Bioinformatics Patents
Please note that the faculty members listed for this course are subject to change prior to the actual course date.
**Bilski v. Kappos Update: The Supreme Court finally issued its long-awaited ruling in Bilski v. Kappos on Monday, June 28. While some commentators describe the decision as "business as usual" because the Supreme Court did not rule that either software or business methods are not patentable, Bilski has ended the broad comfort of the "useful, concrete and tangible result" test for patentable subject matter. The machine or transformation test remains useful, but we know it is not the exclusive test under Section 101. Other tests from the case law may be applied, and the CAFC may choose to formulate new tests. You will need to understand the intricacies and details of the decision and the prior Supreme Court and CAFC decisions it discusses in order to assess the impacts to your practice and clients and to respond accordingly. You will also need to understand the U.S. Patent & Trademark Office policies, procedures and practice after Bilski. Our faculty for this course will be revamping and updating the course content to reflect the impact of the Court's decision.**
This course addresses the very difficult and sophisticated task of how best to claim, prosecute, and litigate software and related inventions in their rich variety so as to have their patents held not invalid and infringed by the Federal Circuit. But that rich variety requires a variety of disparate claiming, specification drafting, prosecution, and litigating techniques. The broad spectrum of available software patent protection opportunities that advanced beyond the expectations of even the most optimistic patent practitioners in this field since State Street Bank and AT&T v. Excel has recently been questioned in the Nuijten, Comiskey and Bilski decisions and in the USPTO’s Software Guidelines. Bilski in particular shows the CAFC’s retreat from the “useful, concrete and tangible result” analysis to “tied to a particular machine or apparatus” or “transforms a particular article” tests. Moreover, recent cases have suggested that infringement may be avoided when infringing activity crosses borders or multiple parties are involved in the acts or elements comprising infringement. The expanded opportunities for, and obstacles to, effective software patent practice are reflected in the course syllabus. The course and text address why different software applications (e.g., Internet-related software) require special claim drafting, prosecution or litigation techniques. Claim styles and limitations designed to meet the somewhat unclear post-Bilski §101 standards are discussed. This course also explores the countercurrents arising from concern about the quality of some business method patents and from the open source movement.
Legal ethics in the context of duty of disclosure under 37 CFR §1.56 and USPTO conflict of interest issues will be presented from 9:00 to 11:00 a.m. on the third day, as currently estimated.