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[bchuah]

I'm actually rather surprised that there's not much mention in this forum about In re Bilski, either that or I'm searching on the wrong terms.

I have an industrial engineering degree, and have been working in process reengineering/risk technology consulting for the last 5 years, but am considering a switch to IP law. Sadly, the more I read about Industrial engineers in this forum...it's making me think twice about taking and passing the Patent Bar and looking for jobs as a patent agent.

However, let's assume say...business methods become more widely patentable and less restrictive in their categorization as a result of this particular case....does anyone think that the demand for process engineers or engineers working with systems/applications will rise?

I have no prior experience in IP law, but I know from reading that EE/ME's are the hot engineering degrees to have right now to go into IP...and maybe I'm fooling myself or being a little too hopeful (please go easy on me), but it would sound logical that if business method patent-eligibility becomes more relaxed...it might invite more applications of such patents...and therefore result in a greater need for engineers who are familiar with business processes. Yes? No?

Any comments or thoughts are welcome, and as I've mentioned before, it could be just wishful thinking on my part and a means to justify the possibility of a career switch. 

[Isaac]

However, let's assume say...business methods become more widely patentable and less restrictive in their categorization as a result of this particular case....does anyone think that the demand for process engineers or engineers working with systems/applications will rise?

IMO, the CAFC's opinion in in re Bilski is unlikely to have any positive effect on the patentability of business methods.  At best the court will confirm the status quo.

[JimIvey]

As I've said here many times before, there is no meaningful category of invention called "business methods" or "methods of doing business" in US patent law.  Of course, my views tend to be out of the mainstream.  However, in this case, my views on the matter were pretty clearly vindicated by the CAFC in State Street.

Here's my quick take on Bilski.  Note that it was quickly thrown together; I might temper my perspective upon further reflection.

Bilski is no big deal.

First, remember the source --  Board of Patent Appeals and Interferences (BPAI).  The only lower authority of patent law is the examiners themselves.  Even district court opinions (which are next to meaningless except for the parties involved) carry more weight.  How often has the PTO (even it's highest officers) gotten patent law wrong?  ALL THE TIME!!

And, as far as I can tell, the USPTO has an agenda to weaken patent protection as much as it can -- particularly for computer-implemented inventions.   I see the Bilski opinion as advocacy by the USPTO.

Second, the BPAI expressly limited it's opinion to methods that are NOT performed by any machine (e.g., a computer).  I think that you're asking for trouble any time people have to read a contract to determine whether they infringe your patent.  I'm not completely convinced such is ineligible subject matter under S 101, but I dont' think anyone will allow such a patent to stand for whatever reason.  Contracts have been around for ever and the "prior art", though extensive, isn't easily searchable.  I think Bilski was a case like that, as I recall.

The claims at issue in Bilski could have (and should have) been rejected for any of a number of other, perfectly legitimate reasons -- vagueness, novelty, obviousness, etc.  For whatever reason, the PTO chose to make the case about something else.  My guess -- making the case for vagueness, anticipation (lack of novelty) and/or obviousness would have been more work than the Office would have liked (for the Bilski case and others like it).  Having a nice threshold filter would make the PTO's job easier by dismissing a good number of applications as "out of bounds."

Has Bilski changed the way I practice?  Not one bit.

Regards.

[ababab]

The Supreme Court has granted certiorari in the Bilski case.

Thoughts?

Predictions?

Prosecution strategies for now?

[artchain]

http://www.bizjournals.com/boston/stories/2010/06/28/daily2.html

Apparently there's a huge amount of interest in this...  the SCOTUS blog has been down all morning!

http://www.scotusblog.com/

[Yak]

Yes, the SCOTUS blog was down most of the morning and the .pdf of the slip opinion wasn't available until later in the afternoon on that site. 

Many of the IP blogs I read have been anticipating this decision for weeks like it was going to be some kind of game changer.  Although I am no constitutional scholar, it seems to me the SCOTUS did what they seem to regularly do.  They merely say, "Lower court - USPTO, you got it wrong go back and fix it."  Instead of providing some kind of clear guidance as to how it should be done.  After a quick review of the case, as far as I can tell all the court did was confirm everyone's expectation that Bilski's patent would not be held valid and said that under certain circumstances that business method patents are "patent-eligible".  But the court is split on the negative side overall on the general patentability of business method patents in general.  I don't know if I would expect a boom in business method patents as a result. 

www.ipwatchdog.com posted a memo from the USPTO to the examiners regarding the Bilski decision yesterday.  http://ipwatchdog.com/blog/USPTO_bilski_memo_6-28-2010.PDF

[MYK]

http://www.bizjournals.com/boston/stories/2010/06/28/daily2.html

Apparently there's a huge amount of interest in this...  the SCOTUS blog has been down all morning!

http://www.scotusblog.com/

Queue the "Not sure if serious" pic.

McDonald v. Chicago was also released yesterday, and 15,000,000 or so people (very conservative estimate on my part ) have been eagerly anticipating that decision.

As far as Bilski, what pisses me off is that if that was all They were going to hold, it seems to me that They could have released it back around March when it was expected to have come out (based on the typical delay between arguments and opinions).  Instead, They held it until the very last day, building up anticipation that They were going to do something major.