Business Method Patents

Protecting business methods in a changing legal environment

Protecting innovative business methods and services has presented unique challenges for decades, the most recent being the Supreme Court's decision in Bilski v. Kappos, which Finnegan briefed and argued for Bilski. For the last forty years, Finnegan has been involved in the efforts to mold the law to accommodate advances in information processing. We represented companies in the software arena during the 1970's, as the U.S. Supreme Court struggled with defining patent protection for software inventions. We then worked with the U.S. Patent and Trademark Office (USPTO) to fashion standards for examining applications in the software area after the Supreme Court’s landmark 1981 decision in Diamond v. Diehr, which defined the appropriate scope of protection for computer-related inventions.

Before and after Bilski

Finnegan has been at the forefront of some of the seminal court cases expanding the realm of patent protection. In 1980, we wrote an amicus brief to the Supreme Court in Diamond v. Chakrabarty on the patentability of a living organism. We also drafted the application in In re Lowry, for example, and prosecuted the case through the USPTO. That case established the patentability of claims to a machine-readable data structure in a computer. In the Federal Circuit, we represented one of the parties in AT&T Corp. v. Excel Communications, Inc., which dealt with the patentability of a method of determining telephone charges. We also filed an amicus brief in the Federal Circuit in In re Beauregard, which concerned claims to a computer program embodied in a tangible media, such as a floppy disk. More recently, we wrote an amicus brief for AIPLA in In re Bilski before it went en banc at the Federal Circuit, and an amicus brief for Accenture to the en banc court. Based on Finnegan’s expertise in this area, the Bilski applicant turned to us to seek Supreme Court review, and when we succeeded, Finnegan's own Mike Jakes argued the case at the Supreme Court. In its decision, the Court agreed with our arguments that the Federal Circuit's mandatory machine-or-transformation test for patentable subject matter was too restrictive and that the Patent Act does not exclude business methods from patenting.

After the Bilski decision, innovation in e-commerce, financial services, and medical methods continues. Finnegan has advised and will continue to advise companies on strategies consistent with the Supreme Court's directives. As the lower courts begin to apply the Supreme Court's ruling, Finnegan will be there. We already represent several patent owners in cases pending at the Federal Circuit involving the patent eligibility of business methods and software.

Our interest and experience in patentable subject matter can also be seen from our extensive writing and speaking on the topic. In the last 15 years, Finnegan attorneys have authored more than 50 articles on issues related to business method patents, including chapters in BNA's Electronic and Software Patents Law and Practice. In addition, in the last two years alone the firm has hosted a dozen seminars or webinars on the topic, and our attorneys have presented at conferences organized by legal associations, business organizations, and academic institutions.