U.S. Supreme Court decides Bilski v. Kappos concerning patent eligibility

Lawrence M. Sung

On June 28, 2010, the U.S. Supreme Court issued its decision in Bilski v. Kappos. The Court affirmed the Federal Circuit judgment that Bilski's business method was unpatentable as an abstract idea, but held "[T]he machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101. The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible 'process.'" The Court eschewed a categorical rejection of business methods as patentable subject matter, but admonished that inventions that might have involved a useful, concrete, and tangible result under State Street Bank v. Signature Financial may not be patent eligible now. The Court otherwise leaves to the Federal Circuit any refinements to the test for patent eligibilty. In so doing, the Court has allayed many fears that patent rights for technologies such as software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals, would be greatly undermined or extinguished.