U.S. Supreme Court to Rule on What is Patentable Subject Matter

When the Federal Circuit rendered its opinion in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008),  it significantly limited patent protection, particularly for business methods and software. The Court ruled that to be eligible for patenting, a “process” or method must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (the “machine-or-transformation” test). The United States Supreme Court has now elected to review the Federal Circuit’s decision, considering two questions regarding the scope of patentable subject matter. First, whether a “process” is subject to the “machine-or-transformation” test to be eligible for patenting. Second, whether the “machine-or- transformation” test contradicts the Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273. A decision will probably be reached sometime this Winter. Whatever the outcome, the future of business method and software patents that do not meet this current “machine-or-transformation” test hangs in the balance.