Brinks Hofer Gilson & Lione Files Amicus Brief in In re Bilski

CHICAGO – Brinks Hofer Gilson & Lione, one of the largest intellectual property law firms in the United States, on behalf of Accenture and Pitney Bowes today filed an amicus brief with the Supreme Court of the United States supporting a petition for certiorari of a recent patent decision. The Federal Circuit’s decision has created turmoil in the ranks of inventors and corporations seeking to protect business methods and other cutting-edge process inventions.

In its In re Bilski decision, the Federal Circuit decided the patent law will protect only inventive processes that involve a “particular machine” or “transform an article from one state to another.” This decision allows the United States Patent & Trademark Office to reject out of hand patent applications for business methods or other information technologies that achieve their advantages in other ways. As an example, innovative methods for operating businesses, manipulating streams of data to achieve financial advantage or using information to improve human interactions all fall outside the scope of the patent law as now interpreted by the Federal Circuit.

Accenture and Pitney Bowes argue that the Federal Circuit’s restrictive Bilski decision imposes a rigid analysis that misreads prior decisions of the Supreme Court and, in effect, throws the patent law back a century to a time when machines were the primary technology of mankind, before the advent of computers and the information age.

The Federal Circuit has applied similar rigid rules of law in the recent past and in every case, the Supreme Court has admonished the court to instead use sensible, flexible and fair standards for deciding patent issues. The Supreme Court has repeatedly made the point that the legal certainty of a rigid, bright line rule is not to be favored over the fundamental fairness of a flexible rule adapted to accommodate inventions that cannot now be imagined.

“Except for a few areas such as laws of nature, mathematical formulae and abstract ideas, the Supreme Court has always interpreted section 101 broadly to encourage invention and innovation,” said Wayne Sobon, Accenture’s Associate General Counsel and Director of Intellectual Property who submitted the brief for Accenture.

“Industries such as software, finance and life sciences all rely on process patents to protect their investments in research and development and Accenture, along with other companies and individuals, may lose existing and future patent rights if Bilski’s rigid machine-or-transformation test stands,” said Mr. Sobon. “Accenture’s amicus brief urges the court to restore this flexible approach to patent-eligible subject matter and preserve broad access to the U.S. patent system.”

“It is hoped the Supreme Court will grant certiorari, will reverse the aberrant Bilski decision and return the patent law to the 21st century,” said Joel W. Benson, a shareholder and an attorney in this matter.

In addition to Mr. Benson, the Brinks attorneys who prepared the amicus brief are Meredith Martin Addy and Charles M. McMahon.

The amicus brief can be found at

Founded in 1917, Brinks Hofer Gilson & Lione is based in Chicago with five additional offices across the country serving the intellectual property needs of clients from around the world. The firm is one of the largest IP law firms in the country, with more than 170 attorneys, scientific
advisors and patent agents specializing in intellectual property litigation and all aspects of patent, trademark, copyright, trade secret, unfair competition, intellectual asset management, and technology and licensing agreements. Brinks routinely handles assignments in fields as diverse as electrical, chemical, mechanical, biotechnology, pharmaceutical, nanotechnology, Internet and computer technology, as well as in trademarks and brand names for a wide variety of products and services. For more information, visit
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