Bilski v. Doll
Justices to rule on standard for 'business method' patents (June 1, 2009)
The Supreme Court has agreed to weigh in on how certain patent applications are examined.
Bernard Bilski and a partner devised a business method of hedging commodity risk and, in 1997, filed for patent protection.
The U.S. Patent and Trade Office rejected the application, holding that "the invention is not implemented on a specific apparatus and merely manipulates an abstract idea and solves a purely mathematical problem without any limitation to a practical application, therefore, the invention is not directed to the technological arts."
Bilski appealled to the Board of Patent Appeals and Interferences but was told that because the process did not produce a "useful, concrete and tangible result," it could not be patented.
The case then proceeded to the Federal Circuit Court of Appeals, which last October upheld the decision of the patent office.
To be patentable, the en banc court held, an invention must fall into one of two categories: (1) it must be tied to a particular machine or apparatus, or (2) it must transform a particular article into a different state or thing. The court ruled business method inventions are subject to the "same legal requirements for patentability as applied to any other process or method."
The ruling shocked many in the field and led to a petition to the Supreme Court as well as more than three dozen friend-of-the-court briefs.
Question presented: Whether a "process" must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (”machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101 and whether the "machine-or-transformation" test for patent eligibility, contradicts Congressional intent that patents protect “method[s] of doing business” in 35 U.S.C. § 273.