Bilski restricts business method, software, diagnostics patenting

Dr Amanda McBratney of McCullough Robertson reports on Bernard Bilski and Rand Warsaw, US Court of Appeals for the Federal Circuit (CAFC) (2007-1130, serial no. 08/833,892), October 30, 2008, which has attracted remarkably little attention here in Australia, but may have a significant impact on Australian innovators in business methods, as well as software and medical diagnostics.

According to Dr McBratney, the new US ruling on business methods in Bilski has rejected the previous ‘useful, concrete and tangible result’ as inadequate, and reinvigorated the Supreme Court’s ‘machine-ortransformation’ test. Rather, McCullough Robertson notes that the machine-or-transformation test significantly narrows the scope for method patents, and holds many uncertainties.

The Bilski decision does not just apply to business method patents; it is broad enough to impact on
other big business sectors such as software and diagnostics. According to Dr McBratney, the decision will certainly have an impact on Australian innovators who hold US patents, posing new questions of invalidity and risks of revocation. Moving forward, it may also affect Australian patenting activity in the US.

Sparke Helmore note that it now appears that Australian law on patenting processes is broader than the US, although the Supreme Court may ultimately overturn this most recent ruling.

Bilski restricts business method, software, diagnostics patenting