Supreme Court Grants Cert. In Bilski

Posted on June 1, 2009 by Rajiv Sarathy

The Supreme Court of the United States today granted certiorari in the Bilski case.  The primary question the Supreme Court has been asked to answer is:  whether the Federal Circuit's "machine-or-transformation" test is the appropriate test to determine whether a claimed process should be patentable subject matter.  To be valid, a claimed invention must (1) fall within one of the specified categories of patentable subject matter, (2) be novel, and (3) not be obvious.  This case deals with the first threshold issue of patentability. 

Although the original Bilski case involved a pure business method (i.e., not implemented in software), it is likely that the Supreme Court's decision could have an impact on software patents because many patent applications directed to software recite "method" or process claims.

A large number of patent practitioners and their clients will be watching this case closely.

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Bilski Appeal to U.S. Supreme Court

Posted on May 7, 2009 by Rajiv Sarathy

After losing at the Federal Circuit, Bilski filed its appeal with the U.S. Supreme Court.  Last week, the USPTO filed its Opposition to the appeal.  The Opposition quotes the following language from the Federal Circuit decision:

[W]e agree that future developments in technology and the sciences may present difficult challenges to the machine-or-transformation test, just as the widespread use of computers and the advent of the Internet has begun to challenge it in the past decade. *** And we certainly do not rule out the possibility that this court may in the future refine or augment the test or how it is applied. At present, however, and certainly for the present case, we see no need for such a departure.

(Pages 14-15 of the decision.)  However, the Opposition leaves out the following sentence from that passage:  "Thus, we recognize that the Supreme Court may ultimately decide to alter or perhaps even set aside this test to accommodate emerging technologies."

The Opposition makes a good argument on why Bilski is not the appropriate case for determining whether software is patent eligible.

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