The Supreme Court’s much awaited (at least by patent attorneys) decision in Bilski v. Kappos has finally dropped, and while there may be much said about it, the decision itself actually did not say much. By way of brief background, the Bilski decision addresses what the guidelines are for the patentability of software processes. The underlying Federal Circuit decision had laid down a somewhat workable test, stating that a patentable process must be tied to a particular machine or must cause a transformation of a particular article into a different state or thing (the so-called “machine or transformation” test).
While the “machine or transformation” test still left much room for interpretation, it at least laid down a rule for practitioners (and inventors) to work with. However, the Supreme Court rejected this test as a rule, stating that it unduly narrowed the plain language of the Patent Act, and instead suggested that the “machine or transformation” analysis may be at best a helpful guideline. Ultimately, the Court emphasized the underlying rule that abstract ideas are not patentable, pointed to the relevant statutory provision, held that the Bilski application sought to patent such an idea, and rejected it on that basis.
In this regard, departing Justice Stevens made the most pithy and candid assessment of the Court’s Bilski decision:
“The Court [in Bilski], in sum, never provides a satisfying account of what constitutes an unpatentable abstract idea. Indeed, the Court does not even explain if it is using the machine-or-transformation criteria. The Court essentially asserts its conclusion that petitioners’ application claims an abstract idea. This mode of analysis (or lack thereof) may have led to the correct outcome in this case, but it also means that the Court’s musings on this issue stand for very little...[new paragraph]The text of the Patent Act does not on its face give much guidance about what constitutes a patentable process. The statute defines the term ‘process’ as a ‘process, art or method [that] includes a new use of a known process, machine, manufacture, composition of matter, or material.’ §100(b). But, this definition is not especially helpful, given that it also uses the term ‘process’ and is therefore somewhat circular.”From a practitioner’s standpoint: yes. This “test” is circular, and gives little if any helpful guidance. It will be up to Congress, if it so chooses, to change this statute and legislate a clear rule pertaining to process patents.
On the other hand, from an innovation standpoint, the Bilski decision shows the Court wisely opting for an ambiguity in the law. Given the unforeseeable and unknowable future developments resulting from the Information Age, particularly in light of software process and method patents, the Court has left the law open to deal with those innovations as they come.