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Jun 28, 2010

Bilski v. Kappos (via Patently-O)

Although Bilski's claims were held unpatentably abstract, the Supreme Court has re-affirmed that the door to patent eligibility should remain broad and open.

Today, the Court once again declines to impose limitations on the Patent Act that are inconsistent with the Act’s text. The patent application here can be rejected under our precedents on the unpatentability of abstract ideas. 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.

By refusing to state any particular rule or categorical exclusion, the Court has almost certainly pushed Section 101 patent eligibility to the background in most patent prosecution and litigation.

 





As usual, Patently-O has a great writeup on the highly anticipated Bilski opinion.  You can read the Supreme Court's full opinion here.  There's also a short, but relatively unhelpful,mention in the Wall Street Journal.

Many of the amici and commentators had high hopes for this opinion to provide clarity and (in some cases) a major shift in what was considered patentable subject matter.  Instead, the High Court took a more conservative approach and in essence said that the existing law was sufficient to decide Bilski's method claims without new law.  There's another post on Patently-O that pre-dated the issuance of the opinion that seems to pretty much call the outcome accurately.

Overall, the opinion came as something of a disappointment to those who felt that there was a wide gap between the holdings in BensonFlook, and Diehr, the latter two in particular. I wouldn't be surprised if this issue re-emerges again in the form of legislative action on the underlying patent statutes, given that the Court's opinion provided so little guidance.  It's unlikely that the opinion is going to satisfy the calls for patent reform from companies and individuals seeking to narrow the scope of patentability and reduce the availability of software patents in general.

Congress has a full slate going into an election season, so I'd be surprised to see much action on the Patent Reform Act of 2010.  This perennial legislation is oft-proposed, but seldom acted upon.