Bob Bain, Chair of the Firm's Electrical, Computer Systems and Software Patent Practice Group, Comments on Bilski v. Kappos

The Supreme Court finally handed down its highly anticipated ― and ultimately anti-climactic ― decision in Bilski v. Kappos. The Court affirmed the Federal Circuit Court of Appeals judgment that Bilski's patent claims, which involve hedging risk when buying and selling energy commodities, are unpatentable. But rather than directly address the "machine-or-transformation" test at the heart of the Federal Circuit's earlier decision, the Court found these claims to be too abstract to be patentable under 35 U.S.C. §101.

Simply put, the "machine-or-transformation" test requires that a claimed method must be tied to a particular machine or transform a particular article into a different state or thing to constitute patent-eligible subject matter. The Court held that while this test is a useful and important clue for determining patent-eligibility under §101, it is not the sole or exclusive test.

The Court also left the door open for business method patents. According to the Court, "[A} business method is simply one kind of 'method' that is, at least in some circumstances, eligible for patenting under §101."

Although many watchers of this case expected a definitive ruling on either the "machine-or-transformation" test or the patentability of business methods, or both, the Court merely reminded us to look to the Patent Act and to prior Supreme Court decisions when determining whether a method or process is eligible for patenting.