The case of Bilski v. Doll, set for oral argument in the U.S. Supreme Court on November 9, may be one of the more significant patent cases in recent memory.  At issue is the scope of subject matter that is eligible for patent protection, governed by section 101 of the Patent Act.  The petitioner Bilski is seeking to patent a “business method,” an allegedly novel process for hedging risk in commodities trading.  His claims were rejected as unpatentable by the Patent and Trademark Office, and by the Federal Circuit appellate court.  The Federal Circuit held that a process must (1) be tied to a machine, or (2) transform matter to a different state or thing, in order to be patentable.  Bilski challenges that ruling and asserts that pure methods can be patentable.

Friday, October 2 saw the latest round of amicus (non-party, “friend of court”) briefs filed in the case, among them a brief by the Software & Information Industry Association.  The SIIA agreed with the results in the lower court, arguing that Bilski’s method is unpatentable.  The SIIA, however, urged the Court not to go “too far” and call into question the patentability of computer software.  The SIIA explained that software inventions have long been treated as patentable by the courts and the Patent and Trademark Office, and that the software and information industries have thrived with the availability of patents.  The promise of patent exclusivity is one factor that leads to investment in the industry.

Over 30 amicus briefs have been filed in the case, with many more still pouring in.  Further updates will follow after oral argument in the case.

In a previous blog entry I mentioned the recent letter by Senate Judiciary Committee leadership sent to the White House urging the  prompt appointment of someone to fill the newly create Intellectual Property Enforcement Coordinator (often referred to as the “IP Czar”) position.  While the two most frequently mentioned candidates for the position in the blogosphere are Shira Perlmutter and Victoria Espinel, it has become clear that the list of potential candidates for the IP Czar position contains several more names and may be growing.

While the IP Czar position may be the most talked about IP position to be filled, it is certainly not the only one.  With Gary Locke now confirmed as the new Secretary of Commerce, the Obama Administration is sure to focus on appointing someone to head the Patent and Trademark Office (PTO).  Apparently, two of the candidates – Q. Todd Dickinson, who is Executive Director of the American Intellectual Property Law Association (AIPLA) and also prior head of the agency toward the end of the Clinton Administration, and James Pooley, a prestigious Silicon Valley patent attorney -- were both recently interviewed by the Obama Administration.  Whoever is chosen by the Obama Administration to head the PTO, it is likely that that person will have to be at least somewhat supportive of efforts in the Senate to reform the patent system since the new PTO Director must be confirmed by the Senate Judiciary Committee – the same committee that is pushing the much-needed patent reform legislation.

In addition to IP-related positions at several of the other agencies, such as USTR, State and Justice, there may also be an IP position for an American at the World Intellectual Property Organization (WIPO).  Now that Francis Gurry has taken over as the Director General of WIPO he may be bringing on board several Deputy Director Generals of his choosing.  One of these deputies will be likely be an American --  possibly the DDG for Patents, as that was the position previously held by Gurry and is often considered to be the most important of the DDG positions.  It’s also possible that whoever does not get offered the PTO Director position may be the nominee for this position.  In any event, it’s likely that this will all shake out by the end of the month.

Check in later in the week and the coming months for more updates on these IP positions.

I thought it would be fun to do an “IP Blog Round-Up” featuring some interesting legal issues with a bit of twist when it comes to the subject matter.  Click out to each blog for more details.  Enjoy!

Counterfeit Chic Blog:  Take a look at the legal disclaimers Neiman Marcus included in their holiday gift book regarding the life-size figures constructed out of Lego’s.

Likelihood of Confusion Blog:  You can’t leave your hat on … But make sure you have those cuffs and bowtie if you want to secure a trademark for the Chippendale’s dancer classic look.

Above The Law Blog:  Are Dr. Seuss’ lawyers really the Grinch that Stole Christmas or are they doing their job of protecting their client’s intellectual property? More...

The House Judiciary Committee plans to abolish its Subcommittee on Courts, the Internet, and Intellectual Property.  Instead all IP issues will be taken up directly by the full committee.  The IP Subcommittee had been chaired by Rep. Howard Berman, but Berman will be giving up his chairmanship of the subcommittee to chair the House Foreign Affairs Committee.  The Judiciary Committee is chaired by John Conyers.  Rep. Lamar Smith is the ranking member.  Both are expected to continue these roles in the upcoming Congress.  With no clear heir apparent to take over the Subcommittee and the Subcommittee growing to a size almost as large as the full Committee this move seems appropriate.  Only time will tell whether IP issues get the full attention of the full committee or get pushed aside as more significant issues arise.

The en banc Court of Appeals for the Federal Circuit issued, on October 30th, its long-awaited decision in In re Bilski, attempting to clarify the rules for business method patent eligibility under § 101 of the Patent Act.  In a 9-3 split, the Court affirmed the Patent Office’s decision that Bilski could not patent his method of hedging options to manage commodities trading risk.  While it is clear that the opinion will scale back the patenting of business method patents to some extent, it is difficult to determine how much, and to what extent it may affect software patenting.  Unfortunately, even after 136 pages (including three dissents and a concurrence), the majority opinion appears to leave more questions than answers.

The Opinion can be found at:  http://www.cafc.uscourts.gov/opinions/07-1130.pdf.