Sunday, February 28, 2010

The Bilski Decision: May Require Expert Strategies to Manage Its Impact on Intellectual Property

The U.S. Supreme Court's highly anticipated ruling in the Bilski case has the potential to alter the landscape for business method patents and send shockwaves through the tech transfer community. Though no one can predict for certain the outcome, many observers believe the days of business method patents are numbered.

For Technology Transfer Organisations, it's critical to prepare now and determine your patent portfolio's exposure to Bilski-related turmoil, decide how vigorously you want to defend affected patents, if at all, and explore alternatives for protecting relevant IP.

That's why you should be focused on the practical steps and strategies you can take now to prepare for the fall-out — and minimize any negative impact on IP in development, already-patented innovations, pending applications, and existing license agreements.

Now the technology transfer organisations must focus on the following issues in advance to avoid any adverse impact:

  • What's affected: The scope extends further than you might think, beyond software and IT
  • Understanding the machine-or-transformation test
  • Pre-disclosure: Working with faculty to configure innovations with M&T test in mind
  • Disclosure and triage/assessment: How should your investment and patent criteria change post-Bilski?
  • Alternatives to patent protection: trade secrets, know-how, copyrights
  • Assessing and minimizing impact on existing licenses
  • Recalibrating enforcement actions
  • A bright side? Impact on patent trolls
Patent strategy:
  • Impact on non-US rights
  • Using "do-not-publish" applications during pendency
  • Claim construction to match PTO guidance
  • Considering reissue applications for issued patents
  • Responding to rejections
  • etc.

Dr.Tabrez Ahmad,
Associate Professor of Law,
KIIT University, Bhubaneswar, India,
Research Papers:

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