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Supreme Court Ponders: When Do Ideas Deserve Patents?

TIME
November 18, 2009

Related Professionals: Jakes, J. Michael

Media Mention

13 years after the U.S. PTO rejected their patent application on the grounds that it was “an abstract idea that simply solves a mathematical problem,” Bernard Bilski and Rand Warsaw had their day before the U.S. Supreme Court. Finnegan partner Michael Jakes, acting as counsel for Bilski, argued that patents should not be restricted to the test imposed by the U.S. Court of Appeals for the Federal Circuit, which states that, in addition to being novel and non-obvious, patents should only be given for something that “is tied to a particular machine or apparatus” or “transforms a particular article into a different state or thing.” This “machine-or-transformation test” has sent shockwaves through the information-technology industry, which fears that software and biotech patents could be invalidated under the Federal Circuit test.