Patent Eligible Subject Matter to the Supreme Court

Back in October 2008, the Federal Circuit issued the In Re Bilski decision. The goal and purpose seemed clear, clarify the otherwise murky waters of patentable subject matter as provided by 35 USC 101. In the eyes of many, the decision did less to clear the waters than to muddy them up more. This decision approached and called into question the issue of the validity of business method patent. The court addressed several tests previously used to determine section 101 patentable subject matter, ultimately concluding that a physical transformation or specific purpose machine was required. This decision led many patent practitioners to change how they went about prosecuting and drafting patent applications. One area of interest was how this decision effects software patents as these applications fall into a gray area between business method and statutory processes.

On June 3, 2009, the US Supreme Court agreed to review the decision. This decision by the Supreme Court to review this case illustrates how important these issues are. The eventual ruling by the Supreme Court could greatly narrow the scope of patent eligible subject matter or expand the scope of patent eligible subject matter. In any event, patent practitioners hope that the ruling will at least provide clear and unambiguous guidelines by which the determination of patent eligible subject matter can be made. The last couple of rulings by the Supreme Court have tended to sway more towards the side of narrowing patent rights.

Many feel that patent reform is greatly needed and this upcoming decision may be the first step. Congress may respond with legislation of its own. One likely outcome is that the United States Patent and Trademark Office (USPTO) will issue modified examination guidelines to embody the Supreme Court's rulings. A favorable ruling from the Supreme Court may also reinvigorate the USPTO's push towards issuing new patent rules. These rules have been stuck in limbo/appeal ever since a Virginia court granted GlaxoSmithKline's request for a permanent injunction of the new rules on October 31, 2007. Updates will be posted on Los Angeles Patent Group website.