WASHINGTON (29 June 2010) -- The U.S. Supreme Court ruled 5-4 Monday that a new method of doing business can be patented, and that the ability to patent software should not be limited.
In Bilski v. Kappos, the high court ruled that passing the "machine or transformation" test is not the sole test for determining whether a business process is patentable. Abstract ideas, however, cannot be patented.
IEEE-USA was party to an amici curiae brief filed with the court.
"We are generally pleased that the Supreme Court did not introduce rules that would limit the scope of ideas available for patent protection in our current information age," IEEE-USA Intellectual Property Committee Chair Keith Grzelak said. "We are disappointed, however, that the court's decision did not provide a clearer standard for determination of patentability. The court cited a trilogy of cases that basically say patents should not be granted for abstract ideas. By ruling that Bilski's business method was too abstract, the Supreme Court essentially provided lower federal courts a you'll-know-it-when-you-see-it legal standard to follow.
"Applicants attempting to protect business methods will now be left to guess what is and is not abstract. Inconsistent determination by patent examiners and courts could lead to years of costly litigation, something we warned against in our brief."
Bernard Bilksi and Rand Warsaw, petitioners in the case, attempted in 1997 to patent a hedging system to protect consumers and utilities from major swings in energy prices and demand. The U.S. Patent Office denied the application and the Federal Circuit Court of Appeals upheld the decision. Associate Supreme Court Justice Anthony Kennedy, writing for the majority, called Bilski and Warsaw's system an "unpatentable abstract idea."