Published on November 5, 2008 | by LawNews

Professor Eric E. Bensen comments on In re Bilksi case

“Bensen on the Federal Circuit’s Landmark Decision Regarding the Patent Eligibility of Process Claims Under 35 U.S.C. § 101: In re Bilski, 2007-1130 (Fed. Cir. Oct. 30, 2008),” a LexisNexis Expert Commentary by Professor Eric E. Bensen, was published on November 4, 2008. Professor Bensen authored an amicus brief in Bilksi on behalf of the Intellectual Property Owners Association that advocated essentially the same “machine-or-transformation” test to determine the patent eligibility of processes that was adopted by a 9-3 majority of en banc panel In re Bilski. The Expert Commentary, which is available on LexisNexis at 2008 U.S. App. LEXIS 22479, provides a background of the Bilksi proceeding, a discussion of applicable precedent and an analysis of the decision.

In In re Bilski, the Federal Circuit heard en banc an appeal from the Board of Patent Appeals and Interferences’ rejection of a patent application claiming a method for “managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price.” The central question was the proper standard for determining whether a claimed process is patent eligible subject matter under the Patent Act. In a landmark decision, the Federal Circuit held that to be patent eligible, a process must either (1) be tied to a particular machine or apparatus or (2) transform a particular article into a different state or thing.

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