In re Bilski 판결 이후 영업방법(BM) 발명에 대한 미국의 특허대상 판단기준의 변화에 대한 연구

• 영문명: Post In re Bilski: New Patent Eligible Subject Matter Test for Business Method Inventions
• 발행기관: 세창출판사
• 저자명: 이수미(Lee, Soomee)
• 간행물 정보: 『창작과 권리』2009년 가을호 (제56호), 2~32쪽, 전체 30쪽
• 주제분류: 법학 > 법학
• 파일형태: PDF
• 발행일자: 2009.09.01

영문 초록

Since the CAFC's State Street Bank decision in 1998, which had explicitly affirmed for the first time, the unlawfulness of the so-called 'business method exception' to the patent eligible subject matter under Section 101 of the U.S. Patent Act, and the test to apply is the 'useful, concrete, and tangible result' test, it took exactly ten years for the CAFC to reexamine the subject matter eligibility issues for business method inventions. Such action by the CAFC was probably prompted by the pressure from the Supreme Court, which had actively taken up the appeals for several substantive patent decisions of the CAFC since 2006 and overruled all of them. After the Supreme Court had clearly indicated that the next issue it wanted to review was the patent subject matter eligibility under Section 101, In re Bilski provided the opportunity for the CAFC to declare the 'sole,' 'definitive,' 'applicable,' 'governing,' and 'proper' test for a process claim, called the 'machineor- transformation' test, and outrightly abrogate all other tests, including the State Street Bank 'useful, concrete, and tangible result' test. Under the Bilski 'machine-or-transformation' test, "a claimed process is surely patent-eligible subject matter under Section 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." Only addressing the transformation test, the CAFC elaborated that the distinction that made a process claim patentable or unpatentable under Section 101 was the type of a "particular article," that was being transformed or manipulated through the process claim. In dealing with a case where a particular article is intangible data that represents business relationships and obligations, as in the business method inventions, the Bilski court concluded that transformation of such type of a "particular article" does not pass muster under the Section 101 patent eligible subject matter test. On the other hand, a process claim that manipulates or transforms intangible data representing physical objects or substances, such as bones, organs, or other body tissues, can pass muster under the Section 101 test. Although Bilski reaffirmed State Street Bank's conclusion that there is no "business method exception" for the statutory patent eligible subject matters, the Bilski test has the effect of banning meaningful patent protection for business method claims and invalidating many method patents that had already been issued.

목차

Ⅰ. 머리말

Ⅱ. In re Bilski 사건 이전 영업방법(BM) 발명에 대한 미국의 특허대상 기준

Ⅲ. In re Bilski 사건에 대한 CAFC의 판결

Ⅳ. Bilski 판결 이후 BM발명의 특허대상 판단기준에 대한 CAFC와 미국특허청의 입장

Ⅴ. 맺음말

참고문헌

Abstract

키워드

영업방법 발명 BM 특허 방법 발명 성립성 판단기준 특허성 특허대상 기구-또는-변화 테스트 Business Method Patents Process or Method Claims Patent Eligible Subject Matter Patentability Machine-or-Transformation Test Abstract Ideas Laws of Nature Physical Phenomenon Mental Process