US Supreme Court grants certiorari in landmark ‘business method’ patent case
27/08/2009

On 1 June 2009, the US Supreme Court granted Bilski’s petition for a writ of certiorari (a procedure for seeking judicial review). The court had to consider the following two questions raised in the petition.

• “Whether the Federal Circuit erred by holding that 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 US law, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for ‘any’ new and useful process beyond excluding patents for ‘laws of nature, physical phenomena, and abstract ideas’?”

• “Whether the Federal Circuit’s ‘machine-or–transformation’ test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect ‘method(s) of doing or conducting business’.”


Brief Background on Bilski

On 30 October 2008, the Federal Circuit issued its decision which made it clear that a process is patentable under US law if it “is tied to a particular machine or apparatus” or “transforms a particular article into a different state or thing”. This test has become known as the ‘machine-or-transformation’ test.

The ‘machine-or-transformation’ test further requires that the transformation must be central to the purpose of the claimed process and that “the use of a specific machine or transformation of an article must impose meaningful limits on the claim’s scope” (the court did not elaborate on the exact meaning of “central”).


After Bilski

Since the Bilski decision back in October last year, patent applicants have experienced a dramatic increase in subject matter rejections issued by both the US Patent Office (USPO) and the Board of Patent Appeals and Interferences (BPAI). It appears that both the USPO and BPAI will reject method patents, if they are not clearly tied to a particular machine or apparatus.

From the Supreme Court’s decision it appears that the Court may adopt a more liberal approach to patentable subject matter in the US. This may be good news for patentees of and applicants for US method patents, more specifically patents relating to business methods.
Danie Pienaar
Candidate Attorney
Adams & Adams danie-p@adamsadams.co.za