In re Bilski again

The US Supreme Court has granted cert on In re Bilski (now styled Bilski v. Doll). The case is now pending before the Nine Wise Ones. Here are the court filings (from the point of view of the USPTO).

Bilski, as you recall, requires that business method patents have some sort of “transformative” characteristic — that is, the invention must somehow transform data or information input into something surprisingly different coming out.

The questions presented to the Court are:

1. “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.”

2. “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.

I hope Bilski gets overturned; I don’t like its holding. I REALLY hope Bilski gets overturned.

U.S. patent office shortfall worsens: official | Politics | Reuters

U.S. patent office shortfall worsens: official | Politics | Reuters .

Awww…poor babies. They’re collecting “just” $5.9 million per day (yep, you read right) in fee-based revenue and they’re not happy.

Damn. Let’s do the math. $5.9 million/day times 365 days/year … that’s $2,153,500,000 per year. Not bad. Of course, they’re down from $6.9 million per day … same equation, substitute that number and you get $2,518,500,000. Well, heck, they’re still above $2 billion dollars in fee-based revenue. Of course, it’s $365,000,000 less now than they were collecting in fee-based revenue before the recession (if that’s what we’re in) hit….

Still, I have no sympathy. This agency has more than $2 billion dollars per year in fee-based revenue; I could balance that budget with little difficulty. So suck it up, USPTO, and live within your means, just like the rest of us have to do.

The USPTO's Website

Found at , the United States Patent and Trademark Office’s website provides its users with a huge amount of information about the Office and about patents and trademarks.

The site includes search engines for:

  • Issued patents (text entries from 1976, scanned entries before that)
  • Published patent applications (from 2001)
  • Trademarks – registered and applied-for

There are filing mechanisms for both patent and trademark applications; the mechanisms even work reasonably well.

I send clients to this site regularly; it is readable by those who do not possess the knowledge of an IP practitioner and those clients who actually go to the site come back with awe in their voices, telling me that they didn’t know there was that much information out there.

The home page is always a running flow of USPTO news. Two items in today’s flow are worth mentioning here.

  • The National Inventors’ Hall of Fame has found a home at the USPTO’s museum. This exhibit is well worth visiting. Find the full story here.
  • April 6, 2009 is Design Day at the USPTO. Starting at 9 a.m., design patent examiners, design managers, independent inventors and patent attorneys and agents will have the opportunity to exchange ideas, information, and knowledge about design patent practice. Hon. Randall R. Rader, Chief Judge of the US Court of Appeals for the Federal Circuit (which has exclusive jurisdiction over patent appeals) is the scheduled keynote speaker. Find registration information here, and find the agenda here. This event is FREE, but you have to pre-register.

Nominees Sought for National Medal of Technology and Innovation (deadline is 29 May 2009)

National Medal of Technology and Innovation

Nomination Guidelines.

According to the USPTO’s website:

“The United States Patent and Trademark Office (USPTO) is seeking nominations for the nation’s highest honor for technological achievement. The USPTO administers the NMTI program on behalf of the Secretary of Commerce. The deadline for nominations is May 29, 2009.

“The nominations can be made for an individual, a team of up to four individuals, a company or a division of a company. The honorees are chosen for their outstanding contributions to the nation’s economic, environmental and social well-being through the development and commercialization of technological products, processes and concepts; technological innovation; and development of the country’s technological manpower.”


Nominate yourself if you want. Or nominate the inventor in the next lab. Or, if she’s an inventor, nominate your next-door neighbor. It’s quite an honor for an inventor to receive this medal. The contribution for which the medal is given DOES need to be something that really helps out in the art in which the invention lies. Examples of prior winners include Steve Jobs; Steve Wozniak; IBM; Industrial Light & Magic; Ralph Baer (the guy who basically invented video gaming); eBay; and others of like contributory scale. The President of the US awards the medal every year.

Inventors Resources and Information

USPTO’s Resource’s Page Inventors Resources and Information.

This is a page from the US Patent & Trademark Office’s (“USPTO”) webpage that provides really, really good information about patents, the patenting process, and how to go about finding a patent attorney or agent, among other excellent tidbits of knowledge.

In general, the USPTO’s website, at, is a plethora of really, really good information. I heartily recommend checking it often (the information on it changes) and noodling around to learn something about patents and trademarks. You might be surprised at what you didn’t know….