A June 3 audioconference sponsored by BNA’s Legal & Business Edge division featured commentary on the viability of software patent protection by Finnegan attorneys
Robert Yoches,
Jeffrey Berkowitz,
Kara Stoll, and
Erika Arner. The attorneys first described the impact of three Federal Circuit decisions in software patenting:
In re Bilski, which set rules for software as patent-eligible matter under the “machine or transformation” test;
In re Comiskey, which held that the “routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness; and
MuniAuction Inc. v. Thomson Corp, which addressed software in the Internet context. The attorneys then revisited lessons from some post-
Bilski cases before discussing strategies for already-issued software patents.
Yoches acknowledged that current advice could become obsolete when the U.S. Supreme Court issues a ruling on software patentability issues in its pending review of
Bilski. Finnegan authored a certiorari petition on behalf of the unsuccessful patent applicants in that case.