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VOL. 123 | NO. 223 | Thursday, November 13, 2008

Berkenstock Discusses Effect of Bilski Opinion on Patent Law

By Rebekah Hearn

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H. ROY BERKENSTOCK
Position: Member
Firm: Wyatt, Tarrant & Combs LLP
Basics:  Berkenstock is a member of the firm’s Intellectual Property Protection and Litigation Service Team.
 “(The case is) going to have to be interpreted many times, I think, so the state of things is in a flux right now.”
– H. Roy Berkenstock

H. Roy Berkenstock is a member of Wyatt, Tarrant & Combs LLP’s Intellectual Property Protection and Litigation Service Team. He practices in the areas of domestic and international patents, trademarks, copyrights and licensing.

Berkenstock is a member of the Memphis, Tennessee and American Bar Associations and previously has worked as patent counsel for United States Steel Corp., general counsel for Richards Medical Co. and assistant general counsel for Smith & Nephew Inc., among others.

Berkenstock also served in the U.S. Navy in active duty from 1958 to 1963.


Q: The Court of Appeals for the Federal Circuit recently released its opinion in “In Re Bilski,” which holds “some process claims must either be tied to a particular machine or apparatus, or transform an article.” What does this mean for patent law?

A: Bilski was an inventor who filed a patent application on a method of doing something. He was a financial analyst, and he filed a patent application on a method of protecting against bad weather in hedge fund investments. We call it “a business method patent.” It’s a patent on a process of doing business rather than the process of making an article or mixing chemicals. It kind of gets away from the traditional technology area into the area of human activity, and about 20 years ago, the court case (regarding) State Street Bank first really opened the door to a business method patent. In that case, it was a method of banking. Once that case was decided, it opened up the doors so the courts had the reading that patent law would encompass such methods.

Now, the patent office has literally been deluged with applications, and inventors have gotten more and more creative. So Bilski filed his patent application on his method of hedging against bad weather in these types of hedge fund contracts, and the court examined that to see if it was consistent with prior interpretations, where the method had to be one that literally transformed the physical state of something … and the initial decisions out of the patent office were that Bilski’s methods didn’t do that. I think that the Court of Appeals for the Federal Circuit has agreed with that, and in so doing, has provided a case with several dissents in it, so it remains to be seen. It’s going to have to be interpreted many times, I think, so the state of things is in a flux right now.

Q: The U.S. Patent and Trademark Office recently has been trying to curtail the flood of software and business method patent applications by limiting the interpretation of what constitutes patentable subject matter. What accounts for this deluge of business method applications?

A: The PTO has been deluged, truly, with patent applications on various methodologies that involve the use of a computer. I have applications on … business methods, and we file periodic status reports for the patent office so we can find out when these patent applications are going to be examined. You write one, you file it, and you wait until it gets assigned to a particular patent examiner before it gets reviewed and the overall process starts. I have been getting responses now that say it may be a year or two before it gets to an examiner, and it may be as much as five years. That’s why the patent office doesn’t want any more; they can’t handle what they’ve got. So that’s their natural reaction, is to try to … develop some clearly rudimentary standards for (rejection).

Q: What attracted you to patent and intellectual property law?

A: When I made the decision, I was coming out of law school, and I did not have any intention when I went in of becoming a patent lawyer. I had spent 5 1/2 years on active duty in the Navy, and I had acquired a wife and one child, and then in law school we had two more. … Generating enough income was certainly a driving factor. I did have the required scientific degree; I have a bachelor of science in electrical engineering, and I had been in the military in some type of a technical capacity. So I knew about working in technical fields, and while in law school I had the chance to meet the lone patent lawyer in Nashville at the time, and I was curious about the practice.

Q: What areas of patent work do you generally focus on?

A: I don’t do heavy chemistry and I stay away from some of the biologics, just because I don’t have a sufficient technical background to carry on an appropriate dialogue with people in that area. I do cover basic mechanical areas, electrical, electronic and the like. Over time, I’ve gotten into the business side of things; I now do licensing, I advise clients on various business transactions with their patents and so forth.


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