Authors

Colin P. Marks

Journal Title

Houston Law Review

Volume

37

Issue

3

First Page

923

Document Type

Article

Publication Information

2000

Abstract

Business method patents require further litigation to answer many lingering questions. The decision of the United States Court of Appeals for the Federal Circuit in State Street Bank & Trust Co. v. Signature Financial Group, Inc. eliminated the "business method" exception. The business method exception used a skeptical approach asking "why should a patent be granted." The skepticism inherent in this approach may explain why the doctrine was recognized for so many years.

Since the time of Hotel Security Checking Co. v. Lorraine Co., advances in the field of science and the advent of computers have forced courts to constantly rethink and rework their approaches to patent law. State Street marks the elimination of the business method exception as a per se ban on business method claims, but does not stand for the proposition that all business method claims will now be approved under section 101 of the Patent Act of 1952. Even if a claim clears either the novelty or nonobviousness hurdles to patentability, it still must fall under one of the subject-matter classes. For the time being, it appears that such claims will have higher probabilities of success if expressed through a computer program, which would provide the instrumentality by which the idea or system could reduce something to a different state. The shackles of the business method exception have been removed. How far the courts will now go in allowing business method claims is anyone's guess, but the current trend is definitely more pro-patent.

Recommended Citation

Colin P. Marks, Opening the Door
 to Business Methods: State Street Bank & Trust Co. v. Signature Financial Group, Inc., 37 Hous. L. Rev. 923 (2000).

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