by Mark Malek

Many of my clients have been following the Bilski case.  As our readers know, the case of whether or not a method for hedging risks in commodities trading was recently decided by the U.S. Supreme Court (see our updates here, here and here).  The Supreme Court decided that Mr. Bilski’s “invention” was not directed to patentable subject matter.  But how, you ask, did the question of whether or not Mr. Bilski’s invention was patentable get all the way to the United States Supreme Court?  Shouldn’t these matters normally be decided by the U.S. Patent Office?    Allow me to step you through the road map on how a patent applicant can find themselves before the United States Supreme Court arguing that the Patent Office, and everyone up to that point, is wrong about their invention.

The patent process begins with a spark of genius, i.e., coming up with your invention.  The prudent inventor writes their invention down in an inventor’s log (try using a notebook that cannot have pages torn out of it).  After the inventor gets their invention down on paper (or otherwise reduces the invention to practice), a search is in order.  A great place to start your search is at www.google.com/patents.  If you hit a brick wall, i.e., you cannot find anything close to your invention out there, then talk to a patent attorney and have a search done.  It is highly unlikely that there is absolutely nothing out there like your invention.  There is normally at least something related out there.  After you have found the closest prior art, read it in detail, and point out the differences between the prior art and your invention.  These are points of novelty that will form the basis of your patent protection.

At this point, it seems as though you are ready to file a patent application.  Go to a patent attorney and see which patent application is right for you (see my previous posts on the right patent application for you here).  Let’s assume that you have filed a utility patent application including claims directed to your invention.  The claims of a patent application are the most important thing.  Claims can equate to a property description.  They lay out the boundaries of your protection and serve as the club with which you will later beat infringers or command a high licensing fee. 

We are the gatekeepers of all invention!

Patentability is initially determined by the Patent Office through an initial opinion issued by a Patent Examiner in the form of an Office Action.  It is not uncommon for an initial Office Action to be in the form of a rejection of all the claims that you have filed.  The rejection is not the end of the world.  When filing your application, you should have drafted some broad claims in an attempt to seek as much protection as possible.  Similarly, the Examiner will likely read prior art references broadly and use them to reject your claims. 

After receiving an Office Action, you will engage in a “negotiation” process with the Examiner.  You will attempt to either amend your claims to narrow the scope somewhat, or argue that the prior art cited by the Examiner does not read on the invention as recited in the claims.  In Mr. Bilski’s case, those arguments were futile, and the Examiner issued a Final Office Action.  Your option at this point is to file a response to the Final Office Action, file a Request for Continued Examination (RCE) or appeal.  An RCE starts the examination process over again and, in short, gives you another bite at the apple. 

Mr. Bilski filed an appeal of the Examiner’s decision.  An appeal of an Examiner’s decision is heard at the Board of Patent Appeals and Interferences (BPAI).  The initial step is to file a notice of appeal and an appeal brief.  The Examiner, in turn, files a response brief.  The briefs are reviewed by a group of Examiners prior to going to the BPAI.  Often times, issues are resolved at that level, but not in Mr. Bilski’s case.  If you do not like the decision of the BPAI, then your option is to appeal to the United States Court of Appeals for the Federal Circuit (CAFC).  This is the first step that the inventor has taken outside of the Patent Office. 

This is truly a legal proceeding.  At the CAFC, the inventor will file an appeal brief, and the Patent Office will file an answer brief.  The case will initially be heard by a panel of three judges who will hear the inventor’s arguments and the Examiner’s arguments.  The CAFC will issue a decision either upholding the Examiner’s decision, overturning the Examiner’s decision, or sending it back to the Patent Office with some instructions on how to further examine the case.  In Mr. Bilski’s case, the CAFC upheld the Examiner’s decision and noted that Mr. Bilski’s invention was not patentable.  The game did not end there, however.  Off we go into extra innings (as I’m typing this I’m watching the Phillies/Cubs game). 

Since Mr. Bilski was obviously dissatisfied with the decision of the three judge panel at the CAFC, he then requested a rehearing before the CAFC en banc, meaning that all the judges of the CAFC should hear the case.  It was the decision of the en banc CAFC that gave us the “machine or transformation” test.  As noted in my previous post, the en banc CAFC held that Mr. Bilski’s invention was not patentable because it did not meet the machine or transformation test. 

The case didn’t end there, however.  Mr. Bilski, and much of the patent community, was not satisfied with the en banc CAFC test as it had ramifications in many industries, and essentially did away with business method patents.  The next step was to appeal this decision to the United States Supreme Court.  The parties filed their respective briefs were filed, and several third parties filed amicus briefs (as was also the case at the CAFC) putting forth various points and opinions for both sides.  After the Court took into consideration the briefs filed by both sides, as well as amicus briefs, they eventually handed down the decision that is before us today. 

Clearly it was a long road for Mr. Bilski, and quite the dissatisfying one, but as a patent practitioner, I sure am glad he stuck with it.  His decision to take this case to the High Court brought to the forefront the issues that have been plagued the Patent Office for years, i.e., are business methods patentable and are software inventions patentable.  The answer to both is yes, but that came along with some more questions.  I’ll be back soon with some more analysis about these issues.