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James R. Barney

High Court Rejects Bilski but Leaves Patent Door Ajar

June 28, 2010

Law360

The U.S. Supreme Court has rejected two inventors’ bid to patent a method covering hedging risks in commodities trading, but left open the possibility that business methods can be patented in the future. The high court criticized the so-called machine-or-transformation test used by the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit, in an en banc ruling in October 2008, rolled out a test requiring that a patentable process either be tied to a machine or involve a transformation, but the Supreme Court did not endorse that analysis as the exclusive test for deciding whether an invention is a patent-eligible process. Justice Kennedy pointed out that there were reasons to doubt whether the test should be the sole criterion for determining patentability of inventions in the Information Age. Bilski and Warsaw were represented by Finnegan.

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