BNA Patent, Trademark & Copyright Journal Guest Article: Patenting Anything Under the Sun vs. Bilski


The definition of what is patentable[1] with regard to software and business methods continues to be problematic despite the Supreme Court's attempt in Bilski v. Kappos[2] to bring clarity to this issue.  Applicants for patents directed to such subject matter must routinely fight burdensome and often illogical rejections at the U.S. Patent & Trademark Office (USPTO) that are based upon this decision.  This article addresses a deep flaw in the Bilski decision in an effort to suggest guidance to the USPTO, patent applicants, and in future jurisprudence in this murky area of patent law.


This analysis briefly reviews doctrinal issues (and associated Supreme Court rulings) in tension with defining the scope of patentable subject matter.  On  one hand, the Supreme Court's Chakrabarty decision[3] boldly holds that "anything under the sun" that is made by man should be patentable.  The Court there decided that a genetically-engineered bacterium was within the scope of statutory patentable subject matter.  On the other hand, Bilski holds that claims to a method of hedging business risk are attempts to patent an "abstract idea," and thus, outside the scope of statutory patentable subject matter.  But was Bilski (the patent applicant in Bilski) really attempting to patent an abstract mathematical idea?  An answer to this question begins with a review of the grand old case of O'Reilly v Morse[4] (of Morse code fame).


Excerpt from BNA's Patent, Trademark & Copyright Journal. To view the full article, click the PDF linked below.


BNA Guest Article - Patenting Anything Under the Sun vs. Bilski



[1] The statute defining what is patentable subject matter is 35 USC § 101.

[2] 130 S. Ct. 3218 (2010).

[3] 447 U.S. 303 (1980).

[4] 14 L.Ed. 601 (1853).

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