Yesterday, Bilski filed a petition for certiorari asking the Supreme Court to review the Federal Circuit’s en banc decision limiting patent eligible subject matter. Specifically, the petitioners raised the following questions to the Supreme Court:
Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”
Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional
intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.
The petitioners argue that the “Machine-or-Transformation” test conflicts with Supreme Court precedent and congressional intent. Specifically, the Supreme Court’s last two patentable subject matter cases, Chakrabarty and Diehr, each set forth the proper tests for determining patentable subject matter and only excluded laws of nature, natural phenomena, and abstract ideas from patent protection. The Supreme Court declined to adopt the Machine-or-Transformation test in both Gottschalk and Flook.
The petitioners also argue that by enacting the prior inventor defense in § 273, Congress embraced the proper test for patent eligible subject matter in effect prior to the Bilski decision. Indeed, the section defines “method” for purposes of the defense as meaning “a method of doing or conducting business.”
The next argument made in the petition is that process patents should not be limited to manufacturing processes, but should also include emerging technologies. Although the Federal Circuit rejected a categorical exclusion of business method patents, in reality, the test makes it very difficult to obtain such a patent (a reality that is being played out at the Federal Circuit and at the Board of Appeals).
Should the Supreme Court Hear Bilski?
As Dennis Crouch noted earlier, the case is well developed, having been heard by the entire Federal Circuit and having garnered 38 amicus briefs. But, he also notes that the invention itself is not a compelling one for review. There may be other issues of patentability dealing with prior art and the like (although these issues have no bearing on the § 101 issue). There are a number of other cases coming through the PTO and the courts that may present a better case with a better invention for review. On the other hand, a decision on this petition will not occur until late in the current term (by June). If the Supreme Court hears the case, it will not be until fall, with a decision sometime next spring. Waiting for another case could cause a longer delay and result in a preclusion of business method patents for a longer time.