Workable Solutions to the Challenges of Patenting an Innovative Prcoess

54 Pages Posted: 18 Jun 2014

See all articles by Jamie Hopkins

Jamie Hopkins

The American College

John A. Pearce

Villanova University

Date Written: June 17, 2014


Over the past fifteen years, business method patents have been a focal point of judicial opinions, law reviews, and legislative reform, culminating in the Supreme Court's decision in Bilski v. Kappos and the passage of the 2011 America Invents Act. The so-called "rise" or "proliferation" of business method batents was kick-started in 1998 by State Street Bank & Trust Co. v. Signature Financial Group, Inc., which set forth "the useful, concrete, and tangible results" test for determining the patentability of a business method. However, the courts have continued to rework the tests for determining the patentability of business methods and the focus of patentability has shifted away from the United States Patent Act's language toward the judicially created machine or transformation (MOT) test. The applicability of these judicially created tests have been played out through a variety of high-profile lawsuits, such as Netflix v. Blockbuster, and patent filings from large financial and technology institutions such as J.P. Morgan, Lincoln Financial, and VISA. Additionally, the Bilski v. Kappos decision created significant confusion as to how the United States Trademark and Patent Office and courts should review the patentability of a business method patent.

This article explores the history of the Patent Act, examining what role, if any, the judicially created MOT test should play concerning the patentability of business methods. Additionally, it delves into the current landscape of high profile companies seeking business method patents and what benefit these business method patents may provide. Ultimately, two workable solutions to the current problems facing business method patentability after Bilski v. Kappos are presented in an effort to reinforce the natural language of the Patent Act, ensure the patentability of legal business method patents, and safeguard company directives to invest in new and innovative business methods.

Keywords: patent, U.S., United States, law, legal, court, ruling, business, process, machine, transformation, test, construction, Act, financial, VISA, Bilski, Kappos

Suggested Citation

Hopkins, Jamie and Pearce, John A., Workable Solutions to the Challenges of Patenting an Innovative Prcoess (June 17, 2014). Suffolk University Journal of High Technology Law, Vol. XIV, No. 2, 2014, Available at SSRN:

Jamie Hopkins (Contact Author)

The American College ( email )

Bryn Mawr, PA 19010
United States
610-526-1441 (Phone)


John A. Pearce

Villanova University ( email )

Villanova, PA 19085
United States

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