Supreme Court Renders Narrow Decision in Bilski Patent Case

The difficulty, he said, stems from the concept of process in the information age, and the problems involved with determining what actually constitutes an invention and what doesn’t. “What will happen is that the court made it clear that if you pass the machine or transformation test you’re good,” he said, and noted that many inventors will try to meet this test. “People will try to tie something to a machine or transformation,” Professor Edgar said.

But then he said that the next question will be, “What do you have to have on top of a general purpose computer to meet the machine test?” That, he said, raises the issue of software patents.

Ultimately, the court left the determination of what constitutes additional valid tests for patentability to the lower courts and to the Patent and Trademark Office. “The PTO is going to have to grapple with coming up with operational rules to guide examiners,” Professor Edgar noted. He said that while the machine-or-transformation test is still valid, the fact is that there may be other tests, the nature of which the courts and PTO will have to determine.

“This removes software patents from the crosshairs of the Bilski decision, to mean software isn’t patentable,” said Lawrence Hadley, a Partner in Henigan, Bennett and Dorman in Los Angeles. “You can’t take an abstract idea and implement it through software and make it patentable. A patentable idea is still patentable in software.”

Hadley said that the lower courts had been applying the machine-or-transformation test so rigidly that patents for software or processes had essentially become impossible. Now, “It’s a factor they can look at, but it’s not exclusive,” he said.

The result of the Supreme Court decision on Bilski v. Koppos wasn’t a definitive end to software patents, as some had hoped. Nor did it throw the door wide open. Instead, the Court took a moderate ground that continued to uphold existing laws that gave protection to companies that use business processes they’d developed, while ruling that there has to be more to a patent than an abstract idea that had been in general use in business, and just happened to be put into use in a computer program.

To many, this lack of a definitive answer was unsatisfying. To others, however, it perpetuated a practice the Court has had for years in which it has left the details of implementing its decisions to others. In this case the Court required that lower courts and the PTO pay attention to all of its previous decisions and use them for guidance, rather than simply rejecting all process patents out of hand.