On June 1, 2009, the U.S. Supreme Court granted a petition for a writ of certiorari to determine whether the U.S. Court of Appeals for the Federal Circuit erred in its October 30, 2008 decision requiring a business method or “process” to meet a specific test - the “machine or transformation” test for patentability. That landmark decision, In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), was the subject of a prior Neal Gerber Eisenberg Intellectual Property Alert published January 6, 2009 (view online at http://www.ngelaw.com/news/pubs_detail.aspx?Type=5440&ID=960).

The petition presents two questions for the Supreme Court, which essentially are:

  • Whether a claimed method or “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing; and
  • Whether the “machine or transformation” test contradicts Congress’ intent regarding the patentability of method or “process” inventions.  

Considering the wide ranging implications of the Bilski decision on a variety of industries, it is not surprising that the Supreme Court granted certiorari. However, since the Court’s decision on these questions is not likely to issue until 2010, inventors and patent applicants should continue to adhere to the recommendations set forth in our January Alert. Specifically, patent applicants should specify a particular machine or physical device to which the claimed business method is tied, or specify how the claimed method transforms a device into something different.