The PTO has finally filed its brief in Bilski where it requests the Supreme Court to decline to hear the case. As noted earlier, the PTO had been granted additional time to file its brief and was given even more time until May 1.
Quite unremarkably, the PTO argues in its brief that the Federal Circuit’s decision conforms with Supreme Court precedent in its interpretation of 35 U.S.C. § 101 regarding patentable subject matter. The PTO further argues that the Federal Circuit’s “useful, concrete, and tangible result” test engendered confusion in the law. Other questions not presented in the case, such as the patentability of software, should be left to future cases. Thus, the Supreme Court should deline to hear the case.
As noted previously, a decision on the petition should come by the end of the current term of the Court in June. If the Court agrees to hear the case, it will be during the October 2009 term with a decision coming by the end of that term in June 2010.
I previously wrote about whether the Supreme Court should hear this case. The points in that post still remain. The Bilski decision is terrible for business methods and other similar inventions. Yet, Bilski’s particular invention is probably not patentable under other sections of the Patent Act (e.g., novelty, obviousness). As the PTO noted in its brief, probably only Judge Newman at the Federal Circuit would have held Bilski’s method to include patentable subject matter.
We should find out in the next month or so.
