Can Processes Be Patented? Newholm Breaks Down Bilski

The U.S. Supreme Court recently agreed to hear an important case concerning the scope of patentable subject matter. After reviewing Bilski v. Doll, the nation’s highest court agreed to consider whether the Court of Appeals for the Federal Circuit erred by holding that a “process” can be patented only if it is tied to a particular machine or apparatus, or if it transforms a particular article into a different state or thing. According to Boyle Fredrickson shareholder Timothy E. Newholm,
the decision will clarify whether and to what extent computer programs and Internet-based inventions can be patented.

“The Supreme Court has not addressed the patentability of software and computer related inventions since the early 1980’s,” says Newholm. “Technologies have evolved since then that were undreamed of at that time. The Internet and all of its supporting hardware and software are great examples. Many attorneys feel that the lower courts’ efforts to contort their analyses of these technologies into the outdated framework of the Supreme Court’s decades-old decisions have led to results that do not reflect modern technological and economic realities. The Supreme Court’s decision to take a fresh look at this important issue is a fantastic opportunity to conform this critical aspect of patent law to the realities of the 21st century.”

Newholm also notes the nomination of Judge Sonia Maria Sotomayor has been of interest to many intellectual property attorneys, as she has hands- on experience in the field. Sotomayor practiced international business law at the New York-based firm of Pavia & Harcourt LLP. There, she was exposed to a variety of intellectual property issues, including copyright and international trade issues. For more on this issue, contact Newholm or your Boyle Fredrickson attorney.