Bilksi affirmed, rejecting sole test for patentable process

BVWireIssue #93-4
June 30, 2010

In one of the most highly anticipated, long-awaited patent decisions, the U.S. Supreme Court finally decided Bilski v. Kappos just this past Monday. The Court held that the Federal Circuit Court’s so-called “machine or transformation” test is not the only test for a patentable process (requiring it to be tied to a particular machine or apparatus, or one that transforms an article into a different state or thing). Business methods can also be patentable under the current statutory scheme (35 U.S.C. 273), the Court ruled.

Under this interpretation, the Court still threw out the Bilksi patent, which explained through a series of mathematical steps how commodities buyers and sellers in the energy market could protect, or hedge, against the risk of price changes. “This is an unpatentable abstract idea,” the Justices held. By doing away with the machine or transformation test as the sole test for determining whether an invention is patentable subject matter, “the Supreme Court has kicked open the door and will not allow it to be closed on new technologies and innovations that we cannot today imagine,” says a recent posting by the Practicing Law Institute.

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