A Study on Business Method Patent — Explore Current Development of Practice From the Bilski Case

Whether business methods can be patented has been somewhat controversial. Early in 1908 in the U.S. practice, the Hotel Security Checking Co. V. Lorraine Co.''s Case established "business methods exception principle." However, in the State Street Bank & Trust Co. V. Signature Financial Group case in 1998, the Federal Circuit Court of Appeals repealed of this principle and adopted a liberal "useful, concrete and tangible result" criterion. Since then the number of business method patent applications increased significantly. However, business method patent dispute had not been able to stop. Until the Bilski case in 2008, although the Federal Circuit Court of Appeals did not deny that business method patents are patentable, it took a more stringent “machine or transformation test” criterion. Nevertheless, the Supreme Court did not fully adopt the Federal Circuit Court of Appeals opinion. After the Bilski case, practice in U.S. has not yet reached a consistent interpretation about the patentability of the business method patent. Until the CLS case in 2014, the Supreme Court provided a more definitive judgment to determine the patentability of the business method patent.

Contrast to the controversy of patentability in the U.S., the practice in Japan and Europe discussed not only the patentability but also the inventive step (non-obviousness). Japanese practice take “integrated hardware resources” criterion for patentability, and European practice emphasizes “technical character.” Both of them set the lower threshold for the patentability, but they also adopted rigorous review for inventive step. The study suggests that despite the impact of the U.S. practice, the current standard of Japan and Europe practice is more clearly, so the Taiwan practice may take the similar standard of Japan and Europe.