Patent experts have been buzzing for months about a big decision on the patentability of business methods expected from the Supreme Court. When it finally came down today, the ruling in Bilski v. Kappos surprised many with its ambiguity.
Some had hoped the court would seize the opportunity to lay out some clear rules about inventions that deal with methods and processes, saying explicitly what types can be patented and what cannot. The court refused to do this.
It was "very disappointing," says Tom Chen, partner in the Haynes and Boone law firm of Irvine, California, whose clients include eBay and other Internet businesses that were looking for more clarity. The justices are "letting the lower courts decide" the issues, Chen says, and this "may leave the public with more questions."
The court tossed out the specific invention in this case, as the lower court had done. It rejected a patent on a method of hedging business investments, claimed by Bernard Bilski and Rand Warsaw. (See this Science article.)
The idea was too "abstract," the court found in its ruling. But it gave no guidelines to help others decide in the future if similar claims should be allowed or not. Instead, Anthony Kennedy wrote in the majority opinion that each new process or procedure must be judged on its own. The court knocked down a test for patentability used by the lower court—a requirement that a process be linked to a machine or "transformation" of material to be viable. That's a useful test, the court said, but not definitive. The effect of the decision, one lawyer said, is to keep the doors of the U.S. Patent and Trademark Office wide open for "business as usual."
This was cause for celebration at the Biotechnology Industry Organization (BIO), a Washington, D.C., lobby.
"From our perspective," BIO Deputy General Counsel for Intellectual Property Hans Sauer told ScienceInsider, "maybe we will open a bottle." BIO had urged the court not to adopt hard-and-fast rules about such patent claims. Its members were concerned that any broad restrictions would make it more difficult to get biotech patents, which often focus on processes. "We are quite pleased this morning when we read that the justices crafted a narrow opinion" that avoided a "rigid" approach to defining patentability.