While the U.S. Supreme Court has decided to preserve the viability of business method patents, many lawyers are fuming that the Bilski ruling offers a dearth of practical guidance and is likely to trigger more litigation over what is patentable. The high court on Monday unanimously held that Bernard Bilski and Rand Warsaw’s application for a method covering hedging risks in commodities trading was too abstract to be patent eligible, but determined in a narrow 5-4 vote that business methods are not excluded from patent protection. While disappointed that the claims at issue were found to cover an abstract idea, Bilski’s attorney J. Michael Jakes, partner at Finnegan, said he was pleased that the Supreme Court agreed with the petitioners that business methods are not excluded from patentability and that the U.S. Court of Appeals for the Federal Circuit’s machine-or-transformation test is not the exclusive test for patent eligibility. The ruling allows for the possibility that software, diagnostic medical tests and other business methods can be patented and is a return to the status quo before the Federal Circuit’s 2008 en banc decision came down, according to Jakes. “People in those fields view this as a positive decision because it removes the barrier to patentability,” he said. “The Supreme Court held that the machine-or-transformation test might be OK for physical or tangible innovations, but for software, diagnostic medicine techniques and other inventions, it may be too limiting.”
