Firm Partner Co-Authors Supreme Court Brief in Bilski

August 6, 2009

Firm partner Don Rupert has co-authored an amicus curiae brief filed on August 5, 2009, by the Intellectual Property Association of Chicago (IPLAC) in the case of Bilski v. Doll that is pending in the U.S. Supreme Court. In that case, the Supreme Court will address the tests to be applied when determining whether the subject matter of a process is eligible for a patent under 35 U.S.C. Section 101. The Court is reviewing a decision from the U.S. Circuit Court of Appeals for the Federal Circuit which held that the test for patent eligibility of a process under Section 101 requires that the process either be performed on a specific machine or apparatus or transform a particular article into a different state or thing. In its brief, IPLAC urged the Court to reject the Federal Circuit's narrow test and instead adopt a test confirming that a process is patent eligible if it provides any useful result and is not directed exclusively to a law of nature, a physical phenomenon, or a abstract idea. IPLAC also noted that simply because a process may meet the appropriate test under Section 101 does not ensure that a patent will issue or if issued will be deemed valid. Other portions of the patent statute, such as anticipation and obviousness, must also be considered.

IPLAC is the country's oldest bar association devoted exclusively to intellectual property matters. Its members include attorneys in private and corporate practice as well as government service.