by Mark Malek

The United States Supreme Court recently heard the case of In re Bilski in which the court was asked to make a determination of what is and what is not patentable subject matter.  For more information on the original holding by the Federal Circuit, please check out our previous post.  For some information on the oral arguments at the U.S. Supreme Court, please check out our Bilski Part Duex post.  The Bilski patent application was rejected by the PTO for failing to meet the requirements of 35 U.S.C. § 101, i.e., the PTO held that the invention was not directed to patentable subject matter.

Oral arguments in the case were held in early November 2009.  We all expected a ruling already, but there has not been one yet.  I suspect that a ruling is coming out soon.  As a side note, I was at the US Supreme Court at the beginning of the month, and they read two opinions.  Just to tell you how much of a geek I am, I got really excited thinking that one of the opinions might be Bilski.  No such luck.

The opinion might come out here in the next week or two, so I just want to get my prediction on the record.  In short, the court will hold that the subject matter of Bilski’s patent application is not patentable.  The reasons why they find it unpatentable, of course, is what the patent world will be waiting for.  The implications for many different industries can be huge.  Although I realize that this has some implications in the pharmaceutical industry, my main focus is software.  When the Supreme Court gets through with this case, will software still be patentable?  Will they uphold the rule of law set forth by the Federal Circuit (machine or transformation test)?  Will there be a new test that the Supreme Court enters that will have an effect on the way we have drafted our claims for the past couple of years?

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