Against the backdrop of the petitioner’s and nearly 45 amicus briefs calling for overturning the Federal Circuit’s newly crafted machine-or-transformation test, the PTO filed its brief in support of affirmance at the Supreme Court last week.
Unsurprisingly, the PTO argued that the machine-or-transformation test is dictated by the history of the Patent Act in the US and Supreme Court precedent. The PTO read the cases supporting the petitioner’s position as supporting its own.
The PTO did argue that the machine-or-transformation test would not preclude the patenting of software as has worried some parties. It did argue, however, that even if Bilski included a general purpose computer to implement his claimed method, it would still not be patentable because the computer tie would have been merely “insignificant extra-solution activity.”
Most of the amicus briefs have been filed in support of neither party, but advocate overturning the machine-or-transformation test. Even those purportedly supporting the PTO argue for affirmance, but still suggest a different test from the machine-or-transformation test.
The case is scheduled to be argued on Monday, November 9, with a decision expected by Spring 2010. Given the tidal wave of support for overturning the machine-or-transformation test, this seems likely. It is not clear, however, what the Supreme Court will put in its place.
