New Challenges for Patenting Software and Business Methods
2/9/2009

Stoel Rives member Kory Christensen discussed in The Enterprise the impact of In re Bilsky on software and business methods patent holders and applicants. Decided by the Court of Appeals for the Federal Circuit on October 30, 2008, In re Bilsky overturned a decade of case law on patentability. Previously, if an invention produced "a useful, concrete or tangible" result it was eligible for patent consideration. Under In re Bilsky this approach was replaced by a two-part test: inventions must now (1) be tied to a particular machine or apparatus or (2) transform a particular article into a different state or thing. Unless the decision is overturned by the U.S. Supreme Court (an appeal was filed in January 2009), this test will be retroactively applied to all issued patents and pending applications.

Christensen advises companies that either own patents on software or business methods, or who are pursuing applications in these areas, to conduct an audit of their intellectual property. Given that the Supreme Court is unlikely to overturn In re Bilsky, he warns against a "wait-and-see" approach, laying out a series of immediate action steps to help fortify patents and patent applications.

"New Challenges for Patenting Software and Business Methods" was published by The Enterprise on February 9, 2009.