INVENTIVE STEP

I attended a CLE meeting of the Virginia State Bar Intellectual Property Section last week.  The speakers were Prof. Kristen Osenga of the University of Richmond Law School and Denise Defranco of Finnegan Henderson.

The speakers presented a short paper (written prior to the Supreme Court’s grant of cert.) and an associated Powerpoint presentation.  Prof. Osenga has granted me permission to publish the paper and slides here if you are interested.

One of the most notable intellectual property cases from this past year is the Federal Circuit’s opinion in In re Bilski.[1] In the decision, the court called into question the patent eligibility of business methods (and potentially software) by imposing the “machine or transformation test,” discussed in detail below.   The ruling, however, could have implications that reach far beyond the business method and software arenas.   Certainly, in all fields of business and information technology, these types of inventions are key components of everyday activity.  But other areas, such as financial services and biotechnology, make extensive use of methods for manipulating data which may also fall under the business method umbrella.  Love it or hate it, the Bilski decision has the potential to drastically reshape patent law.

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[1] 545 F.3d 943 (Fed. Cir. 2008).

Continue reading the paper here; view the Powerpoint presentation here.