Tuesday, January 24, 2012
Tuesday, October 12, 2010
Wednesday, October 6, 2010
The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result.
If Congress had intended enablement to be the sole description requirement of § 112, first paragraph, the statute would have been written differently.
Not having been specifically named or mentioned in any manner, one is left to select from the myriads of possibilities encompassed by the broad disclosure, with no guide indicating or directing that this particular selection should be made rather than any of the many others which could also be made.
Bilski’s patent application sought protection for procedures for allowing energy suppliers and consumers to minimize risks resulting from demand and price fluctuations in energy markets. At issue was whether such techniques are eligible subject matter for patent protection as a “process” under Section 101 of the Patent Act, which restricts the categories of inventions eligible for protection to processes, machines, manufacturers and compositions of matter.
Below, the Federal Circuit had held in its en banc Bilski decision that the test for patent eligibility of a process or method was whether the process was "tied to a particular machine or apparatus" or whether it "transforms a particular article into a different state or thing." This was called the "machine-or-transformation test." On appeal from that decision, the Supreme Court addressed three arguments advanced for why the claimed invention does not fall within the scope of Section 101 patentable subject matter: (1) it does not satisfy the machine-or-transformation test; (2) it is directed to a business method; and (3) it is merely an abstract idea.
The Supreme Court found "reasons to doubt whether the [machine-or-transformation] test should be the sole criterion for determining the patentability of inventions in the Information Age." The Court held that the Federal Circuit's view was too limiting and that the "machine-or-transformation test" is not the exclusive test for patent eligibility. The Court noted that, while the machine-or-transformation test can be a useful tool in evaluating patent eligibility, the Patent Act is more expansive in scope, and offers the possibility of patent protection for a broader range of processes than those delimited by the "machine-or-transformation test." Noting that one provision of the Act explicitly contemplates the existence of business method patents, the Court also refused to categorically exclude business methods from the scope of patentable subject matter contemplated by Section 101. The Court, however, went on to conclude that the claims of the Bilski patent application are outside the scope of Section 101 because they are directed to an abstract idea in violation of established precedent holding that abstract ideas are unpatentable.