On November 9, 2009, the United States Supreme Court will hear oral arguments for Bilski v. Doll, a case in which the central issue is the patent eligibility of business method patents.  Bilski v. Doll appears as though it will be an important case for patent owners, particularly those whose patents are amongst the leading the edge of invention and entrepreneurship in the twenty-first century.  As the date for the oral argument draws near, I wanted to share some information about the case.

There are two questions presented to the Supreme Court to decide, each having bearing on how business method patents will be treated in the future.

• The first is whether the Federal Circuit Court of Appeals (CAFC) “machine-or-transformation test” contradicts the US patent laws.  The machine-or-transformation test holds that in order to be eligible for patent protection, a process must be tied to a particular machine or apparatus or transform a particular article into a different state or thing.  By contrast, the patent statutes hold: “[w]hoever invents or discovers any new and useful process… or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 USC § 101 Previously the Court has declined to limit this provision beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

• The second is whether the “machine-or-transformation test,” which may eliminate many or most business method patents, contradicts clear Congressional intent to provide for “a method of doing or conducting business” to be patented.  35 USC § 273

The specific language used by the Court for the questions presented can be found here.

Due to the importance of this case, the United States Patent and Trademark Office (USPTO) has created a web page for collecting information relevant to Bilski v. Doll, including the briefs.  http://www.uspto.gov/web/offices/com/sol/bilski.htm

If the Supreme Court affirms the decision of the CAFC, business method patents, particularly those of the kind typically filed to protect methods in e-commerce, financial transactions, etc. may be a thing of the past.  Conversely, if the Court overturns the CAFC, it may provide a new test for patent eligibility which may further clarify the landscape of business method patents.

Tags: patent eligibility, patent law, supreme court, uspto