Patent Law Practice Center

Bilski Decision: No Concrete Guidance On Test For Determining Patentability of Processes

Many of us are still trying to digest yesterday’s Supreme Court decision on the Bilski v. Kappos case and will most certainly be reading and re-reading the opinion many times before drawing any conclusions.  It will be interesting to see how the various players in the patent community interpret the decision and what they believe will be the significance of the ruling.  I reached out to several of the Practice Center Contributor’s asking them to weigh in on the decision.  Here is what Jeanne M. Gills, Vice Chair, IP Department  at Foley and Lardner had to say….

The Supreme Court’s ruling is fairly narrow.  The Court merely affirmed the finding of unpatentability because the Bilski invention was viewed as abstract ideas.  It was widely viewed that the particular Bilski invention was unpatentable, so that affirmance was not surprising.  Also, I believe many believed that the Supreme Court would not find that business methods were categorically unpatentable (since some business methods could be patentable provided they meant certain criteria).  (While this was a close and split (5-4) decision, I do think that this was the right result, and the alternative could have put some issued patents in jeopardy.)  What the decision fails to do is offer more concrete guidance as to what constitutes an appropriate test for determining patentability of processes.  By rejecting the “machine or transformation” test as the sole or exclusive test, this leaves the door ajar for other tests to be fashioned.  I do not think it is sufficient to say that any test that is consistent with the patent statutory language offers much guidance.  Hence, the Supreme Court gave the lower courts and the Federal Circuit flexibility to devise other tests or criteria for evaluating the patentability of processes in general and business methods in particular. (more…)