Supremes Decide Bilski: Machine or Transformation Not the Only Test, Bilski Not Patentable
Written by Gene Quinn (IPWatchdog and Practice Center Contributor)
Bilski v. Kappos has finally been handed down by the United States Supreme Court, in what has become the most highly anticipated patent decision of all time. The questions presented to the Court for consideration were: (1) whether the Federal Circuit erred by creating the so-called “machine or transformation” test, which requires a process to be tied to a particular machine or apparatus, or transform an article into a different state or thing, in order to be patentable subject matter; and (2) whether the machine or transformation test contradicts Congressional intent (pursuant to 35 U.S.C. 273) to allow for business methods to be patented.
The Supreme Court held that the machine-or-transformation test is not the sole test for patent eligibility under §101, and that the Federal Circuit erred when it ruled that it was the singular test to determine whether an invention is patentable subject matter. Delivering the opinion for the Court was Justice Kennedy. There were no dissents, only concurring opinions, which is in and of itself a little surprising, at least at first glance until you realize that the Justices all agreed Bilski’s invention ought not to be patentable, but some, such as Justices Stevens and Breyer would have found all business methods unpatentable. In any event, Kennedy explained that the Federal Circuit decision ignored well established rules of statutory interpretation, and further explained that there is no ordinary, contemporary common meaning of the word “process” that would require it to be tied to a machine or the transformation of an article. Nevertheless, the machine or transformation test may be useful as an investigative tool, but it cannot be the sole test. (more…)
Bilski v. Kappos: A Recap Before Decision Day
As the entire patent community waits with bated breath for the Bilski decision, it seems like the perfect time to recap the course of events that have brought us here. Yesterday, IPWatchdog had a guest blogger, Robert M. Suarez, who did just that in his article, “Mr. Bilski Goes to Washington: An Abridged Guide.” It is an excellent summary of the Bilski case.
Before he offers his guide to the case, Suarez writes, “For all of the opinions, articles, and conjecture, all one need do is study the law and look at the precedents to know that anticipating how the Supreme Court will rule in a case is akin to trying to gaze into a crystal ball. So, what will be the future of business methods as patent-eligible subject matter? Will the machine-or-transformation test stand? What will be the fate of the Bilski patent? An educated guess is the best that one can hope for in this situation.”
Well said Suarez!! (more…)
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06.28.10 | Bilski, Federal Circuit Cases, posts, Supreme Court Cases | Stefanie Levine