Tuesday, 02 June 2009 18:22

SUPREME COURT TO REVIEW METHOD PATENT CASE

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The Supreme Court of the United States has decided to review the federal appellate court decision of In re Bilski, a seminal decision concerning method patents, in which the Court of Appeals for the Federal Circuit proposed a "machine-or-transformation" test for determining whether a process or method was capable of being patented. 

The Supreme Court's docket reveals that the "Questions Presented" for this appeal (as framed by the party seeking review, in this case the patent applicant), are the following:

Whether the Federal Circuit erred by holding that a "process" must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing ("machine-or-transformation" test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court's precedent declining to limit the broad statutory grant of patent eligibility for "any" new and useful process beyond excluding patents for "laws of nature, physical phenomena, and abstract ideas."

Whether the Federal Circuit's "machine-or-transformation" test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect "method[s] of doing or conducting business."  35 U.S.C. § 273.

John Fulton, Jr.  contributed to this blog entry.

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Oliver Ruiz

Oliver A. Ruiz is a partner with the firm, and represents clients and insurers in intellectual property disputes and litigation matters, as well as, in transactional matters, such as applications for trademark and copyright registrations. He has been rated as AV Preeminent by Martindale-Hubbell. Mr. Ruiz is admitted to practice law in Florida and North Carolina state courts, as well as, in the United States District Court for the Southern District of Florida, the United States District Court for the Middle District of Florida, and the United States Court of Appeals for the Eleventh Circuit. He also represents clients in U.S. Trademark Trial and Appeal Board proceedings. 

He is a Past President of the Federal Bar Association's South Florida Chapter; and is active with other voluntary bar associations, such as the Dade County Bar Association and the Cuban-American Bar Association. Mr. Ruiz is also active with civic and service organizations, including the Rotary Club of Miami, where he proudly served as the Club's 100th President during its centennial year. Oliver earned a bachelor’s degree from Florida State University, and a law degree from St. Thomas University School of Law, where he was as a board member for the Moot Court Board, and President of the Student Bar Association. He is a native of Miami, and is fluent in Spanish.