Patent Protection for Computer Software and Business Methods After Bilski

Program Description
This presentation will provide guidance for assessing whether to seek patent protection for software or a business method and will briefly explore other methods of intellectual property protection and open source licensing.

On June 28, 2010, after months of speculation and anticipation, the U.S. Supreme Court confirmed in Bilski v. Kappos, 561 U. S. ____ (2010) that at least some business methods may be patent-eligible. Although the Court affirmed the Court of Appeals for the Federal Circuit’s determination that certain patent claims at issue in Bilski are not patent-eligible, the Court refused to find that all business methods are ineligible for patent protection. The Court also rejected the Federal Circuit’s en banc determination that the machine-or-transformation test is the exclusive way to determine whether a process is patent-eligible.  However, the Court did confirm that laws of nature, physical phenomena, and abstract ideas are not patent-eligible.

In light of the Bilski decision, lower courts and the U.S. Patent Office will be more likely to focus on whether the patent claim boils down to an abstract idea. If so, the claim is unpatentable.

Speakers
James A. Coles, Esq., Co-Chair of Taft’s Intellectual Property Practice, Patent Attorney
Mr. Coles has vast experience with all types of intellectual property and technology matters, including agreements and resolving disputes involving technology and intellectual property issues, and helps clients determine the breadth and value of their intellectual property assets through audit services and strategies for protecting and exploiting those assets. Mr. Coles frequently assists local, national and international clients with intellectual property and technology agreements and issues in a broad field of technologies including but not limited to electronics, information technology, healthcare, software and medical devices

Anthony P. Filomena, Esq., Partner, Patent Attorney
Mr. Filomena has a diverse background in electrical engineering, computer science, business and law that gives him broad experience and equips him to address a variety of intellectual property issues for clients. He counsels clients in all areas of intellectual property law, including preparation, prosecution and licensing of patents, as well as drafting, reviewing and negotiating proprietary and open source licensing agreements. Mr. Filomena’s practice experience also includes preparing patentability, non-infringement and invalidity opinions. He has experience working with a diverse range of clients, from individuals and entrepreneurial start-up companies, to universities and Fortune 100 companies.

*Directions to Butler’s Campus:
• From Meridian Street head West onto 46th Street -46th Street leads directly to the main campus entrance -At the four way stop, turn right on Sunset Avenue.
• Take first left onto Lake Road (The forest entrance will be on the left near the clock).
• Robertson Hall is the red brick building straight ahead -Park near Robertson Hall or in any designated visitor parking space.  The closest visitor parking spaces will be located on the circle, in front of Robertson Hall.