This morning, the Supreme Court issued its long awaited opinion in Bilski v. Kappos, a case which dealt with whether new processes were patentable only if they were performed with a specific machine, or resulted in a physical transformation of some article. In the run up to the decision, many commentators had predicted that the Court would issue a restrictive ruling, and that it might go so far as to declare that inventions in the fields of software and business methods could not be patented.

The Supreme Court rejected both of those options. Instead, it stated that the language of the Patent Act precluded any rule that categorically excludes business method patents. The Court also explicitly rejected the argument that new technology areas, such as software and medical diagnostic methods, should be excluded from patentability, and stated that excluding such inventions would “frustrate the purposes of the patent law.”

However, the Supreme Court did not indicate that there were no limits on the types of inventions that are eligible for patent protection. In its ruling, the Court reiterated its longstanding rules that laws of nature, physical phenomena and abstract ideas are not patent eligible. It then applied those principles to declare that the invention at issue in the case, which was directed to a method for hedging risk of price changes, was directed to an abstract idea, and therefore was unpatentable. The Court also stated that trying to patent an abstract idea in the limited context of a particular field was not sufficient to avoid the general prohibition on patents for abstract ideas.

Going forward, the practical impact of this decision is that it opens the potential for patent protection for inventions that would not have qualified under the “machine or transformation” test. However, further decisions will be necessary to see exactly how lower courts will apply today’s ruling. For further information, please drop us an email. email the  Baristas

See the entire opinion here:  Bilski 08-964 (pdf).

See earlier post:  Bilski: Much Ado About (almost) Nothing

Today’s post is by Guest Barista William Morriss, a patent attorney in Frost Brown Todd’s Cincinnati office and contributor to Ephemerallaw.

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5 Comments

  1. […] This post was mentioned on Twitter by FreshPatents – Chris. FreshPatents – Chris said: Bilski: S.Ct Refuses to Prohibit Software, Business Method: http://ow.ly/24Tze […]

  2. The Supremes’ opinion was maddeningly, if perhaps necessarily, short on specifics, definitions, or the means of determining patentability. More than anything else, it seems to represent a maintaining of the status quo in patent law. The main difference is that, instead of stewing over machines and transformations, we’ll all be trying to figure out what exactly is an abstract idea. Meet the new boss, same as the old boss.

  3. […] In the never-ending battle for truth, justice and invalidating methods on natural phenomenon the U.S. Court of Appeals for the Federal Circuit has once again taken up the burden to review the case of Classen Immunotherapies, Inc. v. Biogen IDEC (06-1634, -1649), after the Supreme Court vacated the CAFC’s earlier decision in view of the Court’s decision in Bilski v. Kappos. […]

  4. […] Bilski: S.Ct Refuses to Prohibit Software, Business Method, and Medical Diagnostic Method Patents […]

  5. […] Alice kindly petitions for cert, please grant it – we just can’t figure out how to apply Bilski v. Kappos when it comes to computer system claims (and some of us are also unhappy when it comes to the […]