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

Strategies for Prosecuting or Challenging Patent Process Claims Going Forward

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

Conducted on Wednesday, August 11, 2010
Recorded event now available

This CLE webinar 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?


Erika H. Arner, Partner
Finnegan Henderson Farabow Garrett & Dunner, Reston, Va.

Ms. Arner practices patent prosecution management, client counseling, and litigation and helps clients establish and grow patent portfolios, design and implement procedures to protect intellectual capital, and formulate company-wide IP strategies and policies. She co-authored a petition for a writ of certiorari in Bilski v. Doll and co-authored an amicus curiae brief to the federal circuit in In re Bilski.

Leigh J. Martinson, Partner
McDermott Will & Emery, Boston

He focuses his practice on strategic patent portfolio management and complex patent litigation in the areas of analog circuitry, digital circuitry, computer hardware, software, optics, medical devices, RFID technologies, packet and circuit telecommunications, wireless communications, business methods and internet technologies.

Daniel R. Brownstone, Of Counsel
Fenwick & West, San Francisco

He focuses on patent portfolio development based on identifying innovations that are economically strategic to the enterprise, and managing the creation of patent assets to maximize the value of those assets. His practice also includes intellectual property due diligence and patent litigation.


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Intellectual Property Law Advisory Board

Stephen R. Baird


Winthrop & Weinstine

Charles S. Baker


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Mark P. Wine



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