In delivering its Bilski v. Kappos decision on the last day of the term, the U.S. Supreme Court issued a narrow but highly important ruling regarding the types of inventions that may be patented. While affirming a judgment that the invention in the case could not be patented, the Supreme Court's majority decision endorsed a wide scope of inventions that may be patented.
Professor Herlihy is co-director of the Intellectual Property Institute.
The June 28, 2010, High Court action came after Bernard Bilski and an associate sought to patent their method for managing hedge funds. Their patent application had previously been rejected by the U.S. Patent Office, a decision that was upheld by the U.S. Court of Appeals for the Federal Circuit, because Bilski’s methods did not involve machinery or the transformation of tangible items.
Professor Eileen Herlihy, co-director of New England Law | Boston’s Intellectual Property Institute, said the Court’s decision wisely avoided sweeping new standards in the area of patentable subject matter. “While the Supreme Court affirmed the judgment in the case, it rejected the Federal Circuit's ‘machine-or-transformation’ standard as the sole test for determining whether processes may be patented. Rather than adopting the Federal Circuit's analysis, the Supreme Court affirmed the result on the basis of its longstanding precedent barring the patenting of abstract ideas.”
"While some observers had hoped for a broad ruling," Professor Herlihy noted, "the Supreme Court did not announce any new or required test to determine if a process constitutes patentable subject matter. The Court also refused to adopt any general ban against business method patents. The Court instead continued a pattern of rejecting narrow requirements established by the Federal Circuit, such as the machine-or-transformation test, in favor of a more flexible approach."
Because of the flexible approach adopted by the Supreme Court, the Bilski decision is important not only in the area of business method patents, but also in the fields of medicine, biotechnology, and software, among others.
In April, the Intellectual Property Institute and the
Intellectual Property Law Association sponsored a New England Law panel discussion on the
Bilski case. Professor Herlihy, who teaches Patent Law and Current Issues in Patent Law, was joined by two distinguished panelists: Denise DeFranco, a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, who represented
Bilski at the Supreme Court; and Joe Mueller, a partner at Wilmer Cutler Pickering Hale and Dorr LLP, who addressed the government position.
