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June 2, 2009

Supremes Grant Cert in Bilski - Supremely Important Patent Statutory Interpretation Case

Recently, the Federal Circuit in Bilski held that business methods were not patentable unless they satisfy the machine-or-transformation test:  the business methods must either: 1) transform matter into a different state or thing, or 2) be tied to particular machine.  Bilski rejected its own 1998 ruling in State Street Bank, which had reasoned that business methods were patentable if they produced a “useful, concrete, and tangible result”. 

The questions presented in the petition for Supreme Court review are:

1. Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

2. Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.

What is interesting to me is the fact that this presents the "old" style of patent statute -- a broad grant, not the detailed style we see today.  There is much policy development left to the courts by the statute, as a result, and it will be interesting to see how this one comes out.  Bilski was viewed, by my friends at least, as the death knell of many areas of innovation.

June 2, 2009 | Permalink


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