US Court of Appeals to Review Business Method Patents

The US Court of Appeals of the Federal Circuit has decided to rehear the In re Bilski case en banc. The Court heard the case on appeal from the Patent Board of Appeals in October. Instead of rendering a decision, they have decided to rehear the case before the full slate of judges of the Court. The Court has asked the parties to submit supplemental briefs directed to the following questions:

1. Whether claim 1 of the 08/833,892 patent application claims patent-eligible subject matter under 35 U.S.C. § 101?
2. What standard should govern in determining whether a process is patent-eligible subject matter under section 101?
3. Whether the claimed subject matter is not patent-eligible because it constitutes an abstract idea or mental process; when does a claim that contains both mental and physical steps create patent-eligible subject matter?
4. Whether a method or process must result in a physical transformation of an article or be tied to a machine to be patent-eligible subject matter under section 101?
5. Whether it is appropriate to reconsider State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999), in this case and, if so, whether those cases should be overruled in any respect?

The decision in State Street has been criticised in some quarters as over-extending the reach of patentable subject matter to include purely business method patents. As the application in the present case is also directed to a business method (for commodities trading), this is an ideal case for the Court to take business method patents in a different direction. In re Bilski en banc order: http://www.cafc.uscourts.gov/opinions/07-1130%20order.pdf Summary by: James Kosa