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:
- “Former Administrative Patent Law Judge Weighs in on Bilski,” Intellectual Property Lawcast (James Carmichael interviewed) (December 14, 2009).
- "Former Administrative Patent Law Judge Weighs in on Bilski,” Intellectual Property Lawcast (James Carmichael interviewed) (December 14, 2009).
- "AIPLA panel discussion on Bilski with Chief Judge Michel," AIPLA 2010 Spring Meeting (moderated by Miles & Stockbridge attorney James T. Carmichael) (audio file) (May 6-8, 2010).
- “Ducking the Big Issues in Bilski?” Law360 (James Carmichael) (November 30, 2009).
- “Stakeholders Question Future of Business Method Patents After Bilski Oral Argument,” BNA Patent, Trademark, & Copyright Journal (James Carmichael quoted) (November 13, 2009).
- “Patent Case Goes to Supreme Court,” Washington Times (James Carmichael quoted) (November 9, 2009).
- “Software Cos. Eye Key Patent Case in Supreme Court,” Associated Press & ABC News (James Carmichael quoted) (November 7, 2009).
- “Supreme Court May Invalidate Software Patents,” Washington Business Journal (James Carmichael quoted) (November 6, 2009).
- “Beyond Affirmed: Will the Supreme Court Use In re Bilski to Restrict Patentable Subject Matter Even Further Than the Federal Circuit?” BNA’s Patent, Trademark & Copyright Journal (James Carmichael and Stephen Aycock) (October 30, 2009).
- “Post-Bilski Standards For Data,” Law360 (Stephen Aycock) (March 17, 2009).
- “How to Preempt New PTO 101 Rejections,”Law360 (James Carmichael) (February 2009).
- “The Future of Business Method Patents after Bilski,” Law360 (Edward Kondracki) (December 16, 2008).
- "IP Lawyers React To Bilski's Long-Awaited Arrival," Law360 (James Carmichael quoted) (June 28, 2010).
- Federal Circuit Opinion
- PTO Board of Patent Appeals & Interferences Opinion
- PTO Guidelines