Faculty Publications


Workable Solutions to the Challenges of Patenting an Innovative Process

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Over the past fifteen years, business method patents have been a focal point of judicial opinions, law reviews, and legislative reform, culminating in the Supreme Court's decision in Bilski v. Kappos and the passage of the 2011 America Invents Act. The so-called "rise" or "proliferation" of business method batents was kick-started in 1998 by State Street Bank & Trust Co. v. Signature Financial Group, Inc., which set forth "the useful, concrete, and tangible results" test for determining the patentability of a business method. However, the courts have continued to rework the tests for determining the patentability of business methods and the focus of patentability has shifted away from the United States Patent Act's language toward the judicially created machine or transformation (MOT) test. The applicability of these judicially created tests have been played out through a variety of high-profile lawsuits, such as Netflix v. Blockbuster, and patent filings from large financial and technology institutions such as J.P. Morgan, Lincoln Financial, and VISA. Additionally, the Bilski v. Kappos decision created significant confusion as to how the United States Trademark and Patent Office and courts should review the patentability of a business method patent.