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Supreme Court Decision on Patentable Subject Matter

Jim Ruttler, Patent Attorney

Posted Wednesday, July 7, 2010 by Jim Ruttler

The U.S. Supreme Court has decided the Bilski case. Bilski had filed a patent application for a method of hedging risk. The Patent Office rejected the claims as being unpatentable subject matter and the Court of Appeals affirmed the decision. The Court of Appeals also set forth a new test for patentable subject matter and required that claims either be tied to something physical or result in a physical transformation. This test put software inventions at issue. Bilski appealed to the Supreme Court and the Supreme Court accepted the appeal.

Although the Supreme Court affirmed that Bilski’s claims were unpatentable, the decision was generally a positive for pro-patentees. That is, the Supreme Court said that while Bilksi’s claims were unpatentable, they were unpatentable only because they were too abstract and not because they weren’t tied to something tangible. The Supreme Court further stated that tangibility is not a requirement for patentability and that any process may be patentable that is sufficiently unabstract. Hence, the Supreme Court has shifted the line of unpatentable subject matter at least slightly away from software claims.

However, it will remain good practice to describe software inventions in relation to the hardware they are implemented upon. This is because the Supreme Court indicated that inventions tied to something tangible are likely to be unabstract and patentable.

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