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Charles R. Macedo Esq., a partner at New York’s Amster Rothstein & Ebenstein LLP, tells TTT that the decision “keeps in play a wider range of potentially patent-eligible subject matter than if Justice Stevens’ concurrence had been adopted as a majority decision. The flexibility of the majority decision will lead to greater opportunities to argue that what might have been questionable subject matter under the Federal Circuit’s test might nonetheless be patent-eligible subject matter. However, with the flexibility of the Supreme Court’s test comes greater uncertainty in application.”
It is, he adds, “overall a good thing for most existing business method patents” and “does nothing to categorically put in doubt any licenses based on them.” He stresses, though, that “each license may need to be considered on a case-by-case basis in light of the Supreme Court’s guidance.”
Because the Bilski saga “evidences that the standard for determining patent-eligibility is a relatively quick-moving target as legal standards go,” Macedo comments, “the decision calls for use of a wide variety of claim forms and scopes by university TTOs to ensure that the two-decade life of a patent can be fully enjoyed. Many in the patent community breathed a sigh of relief with the decision, knowing that another rigid rule had been struck down as too narrow. The safe harbor of the machine or transformation test probably remains open, but it is not the unforgiving boundary that it was before.”
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