United States Supreme Court Grants Certiorari In Bilski

United States Supreme Court Grants Certiorari In Bilski

Court Will Review Scope of Patent-Eligible Subject Matter

On June 1, 2009, the Supreme Court of the United States granted a petition for writ of certiorari to the Court of Appeals for the Federal Circuit in Bilski v. Doll, No. 08-964 [2008 U.S. App. LEXIS 22479]. The Supreme Court will consider what types of method inventions are eligible for patent protection and whether the Federal Circuit's "machine-or-transformation" test is too restrictive. The Supreme Court's decision has potential ramifications for a broad range of technologies, including software and information management as well as biotechnology.

In its October 30, 2008 decision, the Federal Circuit held the "machine-or-transformation" test is the exclusive test for determining whether a method claim is eligible for patent protection under 35 U.S.C. § 101. Under this test, a method claim must either be tied to a "particular machine or apparatus" or must recite a process that transforms a particular thing (i.e., an "article") from one state or thing to a different state or thing. The U.S. Patent and Trademark Office has begun to reject pending method claims that fail to satisfy this test. In addition, courts have recently begun to rely on the machine-or-transformation test in considering the validity of issued method claims.

The petitioners and supporting amici curiae in Bilski argue that the Federal Circuit's decision ignores Supreme Court precedent that contemplates a much broader scope for patent eligible subject matter. According to the petitioners, the machine-or-transformation test harkens back to machine age technologies and cannot accommodate significant technologies of the 21st Century.

Based on a different interpretation of the same Supreme Court precedent, the Patent and Trademark Office argues that the "machine-or-transformation" test is the only standard recognized by the Supreme Court for determining the subject matter eligibility of method claims. Having granted certiorari, the Supreme Court is on course to resolve this dispute and clarify the standard for method patent eligibility under section 101. The Supreme Court is expected to hear oral arguments in the Bilski case during the October 2009 session.

If you have any questions or wish to discuss how this decision will impact your company, please contact your attorney at Brinks Hofer Gilson & Lione.

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