Bilski: Implications of the Supreme Court's Long-Awaited Ruling

Strategies for Prosecuting or Challenging Patent Process Claims Going Forward

Business methods remain eligible for patent protection

Recording of a 90-minute premium CLE webinar with Q&A

Conducted on Wednesday, August 11, 2010

Recorded event now available

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Course Materials

This CLE course will provide guidance for counsel and companies concerning the implications of the Supreme Court's recent decision in Bilski v. Kappos. The panel will outline best practices for defending patent applications—or challenging them—given the continuing lack of clear guidelines for patentability.


In the long anticipated Bilski v. Kappos decision on June 28, 2010, the Supreme Court rejected patentability of the business process at issue, but it did not eliminate patentability of business methods. The Court, however, declined to specify how and when processes are patentable.

The Court did offer some guidance by rejecting the machine-or-transformation test as the only viable test for determining patent eligibility. It also cautioned against reading its opinion as an endorsement of State Street’s useful, concrete and tangible result.

Further clarification of the standards will develop in the courts. Whether or not a new test or tests will replace or supplement the current test, patent counsel and companies must understand the implications of Bilski to determine next steps to protect patentable subject matter.

Listen as our authoritative panel of intellectual property attorneys examines the Supreme Court’s Bilski decision and its implications for patents on processes. The panel will offer best practices for drafting and prosecuting applications and challenging patents post-Bilski.



  1. Bilski v. Kappos (U.S. June 28, 2010)
    1. The Court’s ruling
    2. Concurring opinions
  2. Implications of the Bilski ruling
    1. At the Federal Circuit
    2. At the PTO
    3. In the districts courts
    4. Impact on earlier patent eligibility decisions
    5. Impact on pending applications
  3. Best practices following Bilski
    1. For drafting patent applications
    2. For prosecuting pending applications
    3. For challenging patents


The panel will review these and other key questions:

  • What are the implications of Bilski for patent eligibility? What is its anticipated impact for past patent eligibility decisions?
  • What strategies should patent applicants employ to improve the likelihood of a successful patent application going forward?
  • What are the best practices for challenging patents following the Bilski decision?


Arner, Erika
Erika H. Arner

Finnegan Henderson Farabow Garrett & Dunner

Ms. Arner practices patent prosecution management, client counseling, and litigation and helps clients establish...  |  Read More

Leigh J. Martinson
Leigh J. Martinson

McDermott Will & Emery

He focuses his practice on strategic patent portfolio management and complex patent litigation in the areas of analog...  |  Read More

Daniel R. Brownstone
Daniel R. Brownstone

Of Counsel
Fenwick & West

He focuses on patent portfolio development based on identifying innovations that are economically strategic to the...  |  Read More

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