In February 2009, the Board of Patent Appeals (BPAI) issued nine decisions that touched on Bilski and patentable subject matter under Section 101 of the Patent Act. In eight of the cases, the BPAI either affirmed an examiner's Section 101 rejection (five cases) or entered a new ground of rejection under Section 101 (three cases). In the remaining case, the BPAI remanded - asking the examiner to consider wether the claims were patentable under Section 101. All nine cases were related to software or electronics type applications.
In Ex Parte Motoyama, Appeal 2008-2753 (Bd. Pat. App. Int., Feb. 27, 2009), for instance, the BPAI reversed an examiner's Section 103(a) obviousness rejection, but entered a new ground of rejection as failing the Bilski test of patentable subject matter under Section 101 of the Patent Act. The Motoyama claim (owned by Ricoh) reads as follows:
1. A method for a monitoring device to obtain an identifier of a monitored device, comprising: obtaining manufacturer information of the monitored device using a hierarchical approach by comparing a response to a query of the monitored device to an anticipated response; accessing the monitored device using a first method to attempt to obtain the identifier using the manufacturer information; if the identifier is not obtained in the accessing step, obtaining a MAC address of the monitored device as the identifier; if the MAC address is not obtained, generating the identifier using a second method; and storing the identifier of the monitored device for use by the monitoring device.
The panel recognized that the claim language did refer to a "monitoring device." However, according to the BPAI, the method "is not recited in terms of hardware or tangible structural elements. Rather, the method could be implemented on a software system, where the elements of claim 1 are implemented solely in software or algorithms. Thus, the nominal recitation of "for a monitoring device" in the preamble does not transform claim 1 into patentable subject matter under 35 U.S.C. § 101." Likewise, none of the steps call for transformation of an article.
Although the BPAI's focus on Bilski has been primarily in software applications, there are many that see a potential for Bilski to spill-over into other areas of technology. Right on this frontier are applications focusing on methods of diagnosing. Filing a couple of days early, Medistem has submitted its brief supporting certiorari in the Bilski case. (Briefs in support of certiorari are due Monday, March 2, 2009). Medistem explains to the court Bilski also limits they types of patents that it can obtain over newly invented predictive tests
The Federal Circuit’s limiting the scope of patentable subject matter for “process” inventions in Bilski casts a cloud of uncertainty as to whether Medistem and other biotech companies can continue to protect with patents their inventions relating to methods of diagnosing causes of diseases and methods of selecting beneficial treatment protocols. Medistem fears that should biotech companies lose the ability to obtain enforceable patent protection on diagnostic and treatment methods, the ability to attract investment capital will sharply decline, and as a direct result the incentive to search for better ways to diagnose causes of diseases and find more effective treatments will decline. Medistem is not alone in its view. Addressing this issue in his dissent from the en banc court’s opinion, Circuit Judge Rader cogently noted that excluding patent protection for methods of using discovered biological or physiological correlations will “undermine and discourage future research for diagnostic tools.” Bilski, 545 F.3d at 1014.
Medistem's primary problem with the Bilski test is that it is the "exclusive test" for determining patent-eligibility of claimed processes. In that sense, the company argues, the rule limits the statute beyond prior Court precedent and beyond Congressional intent.
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