The USPTO issued the following statement in reaction to today’s Supreme Court ruling in Bilski v. Kappos:

“The Supreme Court today affirmed the USPTO’s decision that Mr. Bilski’s invention was not patentable subject matter as his claims were drawn to an abstract idea.  Significantly, the Court ruled that the “machine or transformation” test is not the sole determinant of patent eligible subject matter for process claims, but is nevertheless an important “investigative tool” for evaluating their patent eligibility.  The Court also indicated that a business method is, at least in some circumstances, eligible for patenting under Section 101.”

“The USPTO will be issuing guidance further interpreting the decision as soon as possible.  The USPTO is distributing interim guidance for the examining corps today.”

The opinion can be found on the Supreme Court Web site at: http://www.supremecourt.gov/opinions/09pdf/08-964.pdf.

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Well, that’s all she wrote, folks! This morning the Supreme Court issued its decision in Bilski v. Kappos.  Bilski is the patent law case that asked whether business methods should be considered patentable subject matter. (You can get a quick background on the case here or learn more about business methods and patentable subject matter here.)

You can read the opinion here (pdf) ==> Bilski_v_Kappos_08-964

I’ll be reading the opinion carefully and dissecting what it means for inventors and attorneys alike, but in a nutshell:

• the Court was unanimous in finding that the claims in the Bilski patent application were unpatentable because “they are attempts to patent abstract ideas.”
• the Machine or Transformation test is not the sole test for patentability.
• business methods are patentable processes: “The Court, therefore, need not define further what constitutes a patentable “process,” beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook, and Diehr.”
• no additional test was given: “In disapproving an exclusive machine-or-transformation test, we by no means foreclose the Federal Circuit’s development of other limiting criteria that further the purposes of the Patent Act and are not inconsistent with its text.”

The Supreme Court just wrapped up another session of releasing opinions (you can get caught up over on SCOTUSblog) and still no decision on Bilski v. Kappos.  Of the four decisions remaining, Chief Justice Roberts noted that they will all be released on Monday. Patent Attorneys will release a collective sigh of relief immediately thereafter.

Here are some bits from SCOTUSblog’s live coverage this morning:

“The Court has voted unanimously to drive patent lawyers crazy.”

“The Court actually took a break for coffee to make patent lawyers wait and hope longer for Bilski. (kidding)”

“Bilski is not a record for the longest pending case, but it is among the most amusing.”

“Monday will be guns and Bilski.”

“JPS almost certainly has Bilski, which suggests a narrow approach to permitting business method patents but probably not a extremely detailed test.”

The patent world waits for the Supreme Court’s decision in Bilski v. Kappos with bated breath, while the rest of the world wonders, “What’s a Bilski, anyway?” If you need a primer on the Bilski case, and a little background on why it is so important to the patent world, click on over to IP Watchdog. IP Watchdog, one of the most respected law blogs in the area of intellectual property has published an excerpt from my article, “Business Methods and Patent-Eligible Subject Matter in Light of Bilski v. Kappos“.  I’m very excited that IP Watchdog published my article and I look forward to guest-blogging more there in the future.

Like the rest of us patent wonks, I’ll be keeping an eye out for the SCOTUS decision and I will be writing up an analysis as soon as the opinion is published.

As in all areas of Law, Patent Law evolves over time and is molded by cases decided in the Supreme Court and the Federal Circuit Courts.  According to “Patent Law and Practice, Sixth Edition” by Herbert F. Schwartz and Robert J. Goldman, here are the major cases currently impacting patent law:

• In re Bilski (2008, Fed. Cir. en banc), in which the Federal Circuit established a new standard for the patentability of business method processes and algorithms.
• eBay, Inc. v. MercExchange, LLC (2006,S.Ct.), in which the Supreme Court overturned the test applied by the Federal Circuit relating to the availability of permanent injunctions in patent litigation
• MedImmune, Inc. v. Genentech, Inc. (2007, S.Ct), in which the Supreme Court expanded the availability of declaratory judgment jurisdiction for companies seeking to challenge the patent of another
• KSR Int’l v. Teleflex, Inc., (2007, S.Ct), in which the Supreme Court revisited the law of invalidity for obviousness for the first time in a generation, revising the standard applied by the Federal Circuit since the 1980s
• In re Seagate Tech., LLC (2007, Fed. Cir. en banc), in which the Federal Circuit reversed 24 years of decisions and established a new standard for assessing willful infringement, a precursor to an award of increased damages and attorneys’ fees Critical new issues addressed.