Most people outside the IP community have never heard of Bernard Bilski. But among IP lawyers he is somewhat famous. That's because his struggle to patent an invention could determine the future of business-method patents.
Bilski's fight began more than 10 years ago when he submitted a patent application seeking exclusive rights to a method of using hedge contracts to reduce the risk that a commodity's wholesale price might change. His process is pretty simple: When a commodity seller makes a sale to a consumer at one fixed price, he or she then makes a second set of hedging transactions at a second price.
Bilski may therefore present the Federal Circuit with a case of first impression: "[This is] an invention utterly devoid of technology," Lazar says.
Even if the PTO's decision in Bilski doesn't conflict with prior court rulings, it clearly conflicts with prior PTO rulings. In recent years the agency has repeatedly issued patents for broad business methods with no technological components, says Timothy Meece, a patent litigator for Banner & Witcoff.
In the long run, it may not matter how the Federal Circuit rules in these cases, because it seems unlikely to have the last word on patentable subject matter.
"Everybody thinks this is an issue that will be going back to the Supreme Court," Fiacco says. "The question is which case will be the vehicle for bringing this issue back to the Court."