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Finnegan Files Petition for a Writ of Certiorari in U.S. Supreme Court in Bilski Case

January 28, 2009

Related Professionals: Jakes, J. Michael

Press Release

January 28, 2009

Contact: Chuck Kabat, Schwartz Communications
               781.608.3812 cell

Finnegan Files Petition for a Writ of Certiorari in U.S. Supreme Court in Bilski Case  

Washington, DC – Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, one of the world’s largest intellectual property law firms, announced today that it has filed a petition for a writ of certiorari in the case In re Bilski. The petition seeks to overturn a decision issued on October 30, 2008 by the U.S. Court of Appeals for the Federal Circuit which set forth a test requiring that a patentable  process either be tied to a machine or apparatus or involve a transformation of one thing into something else.  Applying this test, the Federal Circuit affirmed the rejection of the Bilski business method patent application by the U.S. Patent and Trademark Office.

Bilski goes to the heart of patent law by asking what can be patented,” said J. Michael Jakes of Finnegan. “The Supreme Court has not addressed this fundamental issue since 1981, and, in light of the very limiting test put forth by the Federal Circuit in Bilski, the time is right for the Supreme Court to weigh in.”

Inventors Bernard L. Bilski and Rand A. Warsaw said, “We welcome the Supreme Court reviewing the case. The creation of new business methods is critical to spurring economic growth in this country. The Federal Circuit’s Bilski decision is a throwback to the 19th century when our economy was primarily manufacturing based, and fails to recognize that many inventions are based on ideas not necessarily tied to a machine or piece of equipment.  Prior to the Federal Circuit’s decision, the ability to patent a business method put the U.S. squarely ahead of the rest the world in protecting valuable intellectual property assets that are integral to encouraging innovation in today’s economy. The Federal Circuit’s decision represents a step backward.”

Wayne Sobon, Associate General Counsel and Director of Intellectual Property of Accenture and founder of, agreed, noting, “The Federal Circuit’s Bilski decision approaches the U.S. economy as if the incredible revolutions in software, the internet and business innovation of the last 30 years never happened. That’s just wrong. In today’s knowledge and services-based economy, innovation and competitive advantage depend just as much on creating new business processes as creating new widgets. Patent law should reflect the current realities of the economic marketplace.”

The Supreme Court could decide on whether to grant the writ of certiorari before the current term ends in June 2009. Amicus curiae, or friend of the court, briefs are due on or about February 27, 2009.

Finnegan’s petition is available by clicking here.

About Finnegan

With more than 375 intellectual property lawyers, Finnegan is one of the largest IP law firms in the world. From offices in Washington, DC; Atlanta, Georgia; Cambridge, Massachusetts; Palo Alto, California; Reston, Virginia; Brussels, Belgium; Shanghai, China; Taipei, Taiwan; and Tokyo, Japan, the firm practices all aspects of patent, trademark, copyright, and trade secret law, including counseling, prosecution, licensing, and litigation. Finnegan also represents clients on IP issues related to international trade, portfolio management, the Internet, e-commerce, government contracts, antitrust, and unfair competition. For additional information on the firm, please visit