Patent Eligibility Clarified…Sort Of - Fordham Intellectual Property, Media & Entertainment Law Journal
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Patent Eligibility Clarified…Sort Of

Patent Eligibility Clarified…Sort Of

Patent attorneys across the nation are scratching their collective heads following this summer’s ruling by the Supreme Court which addressed the issue of patentability for business method inventions. The Court handed down a decision at the beginning of the summer which addressed the question of whether a patent can be issued for a claimed invention designed for the business world.”[1] The answer, unfortunately, turned out to be almost as vague as the question itself. Rejecting the United States Court of Appeals’ ruling, the Court held in Bilski v. Kappos, 130 S. Ct. 3218 (2010) that the machine-or-transformation test[2] is not the exclusive test to be used for deciding the patentability of a business process under the Patent Act.  In addition the Court held that business method patents cannot be categorically denied patentability. But Justice Kennedy’s majority opinion remained ambiguous as to how a court, or a patent attorney, should determine patentability.

Sure, the majority opinion states that the Patent Act provides for business methods to be patentable. But in denying the petitioner’s patent, the court did not seem to indicate any additional limitations to patent permissibility beyond those stated in precedent, namely novelty, nonobviousness, and detailed description. So the question is what does that really mean at the end of the day? Patent attorneys with clients who wish to patent business methods are now posed with the same challenge of drafting defensible patents that will satisfy the same nebulous parameters under which a patent could stand before Bilksi.  What really changes after this opinion? And how far down the field did the Supreme Court move the proverbial ball?

This appeared to be the perfect opportunity for the court to expound upon the patentability issue, but it opting not to do so the Court likely assured that it will have to address this issue again, in more detail, sometime in the future.

[1] Bilski v. Kappos, 130 S. Ct. 3218, 3223 (2010).

[2] In Re Bilski, 545 F.3d 943, 95960 (CA FedFed. Cir.. 2008) (holding that a process is eligible for a patent if “(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing”).

Matthew Taylor