Chinese Audience Gets Bilski Breakdown

The opening panel on day two of Managing IP’s China-International Forum considered patent prosecution and litigation in the US and was hosted by Finnegan, which represented Bilski before the Supreme Court. "It’s a tremendous victory for the patent bar and for patent owners who believe in the patentability of processes that do not fall within the three exceptions [laws of nature, physical phenomena and abstract ideas]," said Esther Lim, managing partner of Finnegan’s Shanghai office. Lim began the session by explaining Section 101 of the US Patent Act, the Court of Appeal for the Federal Circuit’s (CAFC’s) decisions in State Street and Bilski and the machine-or-transformation test. Richard Racine, managing partner at Finnegan, then outlined the basics of the Supreme Court’s decision. "The Supreme Court rejected the machine-or-transformation test as the sole or only test to determine patentability of a process under Section 101" he said. Racine added that there was "a big, collective sigh of relief" when patent practitioners learned that business methods would still be eligible for patent protection. Questions from the floor addressed the future of the machine-or-transformation test and whether patents should still be drafted with that test in mind. The consensus on the panel was that the safest course was to continue to draft claims to fit within that test.