Breaking: Supreme Court Affirms Bilski
This morning the Supreme Court released it’s highly anticipated opinion (pdf) in the Bilski v. Kappos case. The Court affirmed the Federal Circuit’s rejection of petitioners’ patent (a method for commodities hedging), although Justice Kennedy’s majority opinion rejects the Federal Circuit’s conclusion that the so-called “machine-or-transformation test” is the sole test for determining patent eligibility of a “process” under §101 of the Patent Act.
Justice Kennedy’s opinion does make clear, however, that simply rejecting the machine-or-transformation test as the exclusive test does not mean that the Court is taking a broad view of business method patents, or of process patents more generally. As he writes:
With ever more people trying to innovate and thus seeking patent protections for their inventions, the patent law faces a great challenge in striking the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles. Nothing in this opinion should be read to take a position on where that balance ought to be struck.
Bilski has been closely watched because of what it might mean for the future of biotechnology patents. Now that we finally have an opinion from the Supremes, what, if anything, can we conclude? We’ll check back in later today with more detailed analysis of the opinion and some preliminary answers to that question. In the meantime, happy reading.
Justice Breyer’s well-written concurrence is only four pages (at the end of the PDF). With respect to the future directions the Court may take and its impact on medical diagnostics, he emphasizes the basic purpose of patents, quoting Thomas Jefferson. It seems he wants the PTO and the courts to retain some latitude in denying the patentability of principles that would ‘wholly pre-empt’ the public’s access to ‘basic tools of scientific and technological work.’ With or without the requirement of a ‘machine or transformation’ test.
It seems that we have just returned back to the prior Bilski era, except the ‘useful, concrete and tangible result” test is gone for ever. The “machine-or-transformation” test is still useful and important for process claims. For medial diagnostics patents, after the Federal Circuit’s decision on Prometheus, it is important to find guidance, from Benson, Flook, Diehr, especially Flook, what type of transformation is central to the claimed diagnostic methods, and not just a post-solution activity or a data-collecting step.