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Bilski Information Center

U.S. Supreme Court Issues Decision in Bilski Case

At long last, on the final day of its 2009-2010 term, the U.S. Supreme Court issued its decision in the Bilski case. As predicted on this very website, the Court found the invention under consideration to be unpatentable because it was claimed as an "abstract idea."

The Supreme Court also held that the Federal Circuit's "machine or transformation test" was not an exclusive test for determining subject matter eligibility under 35 U.S.C. 101. The Court discussed, but did not reinstate, the Federal Circuit's earlier "useful, concrete, and tangible" test for an invention to be eligible for a patent.

Since the Supreme Court did not offer any other definitive test of its own, there is now less certainty than ever. Business methods, computer software, and medical diagnostics can all be eligible for a patent under the Supreme Court decision if claimed properly. To claim an invention in a way that maximizes its chance for strong patent protection, an inventor or patent owner would do well to obtain advice from an attorney familiar with the Bilski case.

Miles & Stockbridge lawyers have written and spoken extensively on Bilski, including its effect on software-related patents. Some of their articles are found at the links below.

For further information, contact James T. Carmichael. Mr. Carmichael is a former Administrative Patent Judge with the U.S. Patent and Trademark Office and has been quoted on Bilski by national media including the Associated Press. He can also be reached at 703.610.8648. For more information about Bilski, click on the links below:

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