Bilski Inventors Comment on Decision

On June 28, 2010, the U.S. Supreme Court published its long awaited decision in Bilski v. Kappos. In a split decision, the Court rejected the machine-or-transformation test as the exclusive test for patent eligibility and refused to categorically exclude business method patents. However, the claims as then presented in the Bilski application were also rejected, with the Court relying on prior precedent to find the claims unpatentably abstract.

Inventors Bernie Bilski and Rand Warsaw commented on the decision. According to Bernie Bilski, “We are personally disappointed that the Supreme Court ruled against our claims. However, we are very pleased that the Court maintained the patentability of business methods and other new areas of development.” Rand Warsaw added, “We are happy that the Court agreed with our arguments that the machine-or-transformation test is too narrow, but it would also have been nice to receive a patent after more than 10 years.”

While it was somewhat surprising that the Supreme Court did not seize this opportunity to create a new test for patent eligibility by clarifying the “abstract idea” exception, this was the resulted advocated by AwakenIP in its Amicus Brief. More particularly, AwakenIP urged the Court to avoid further “abstractions of abstractions,” recognizing the danger of fashioning additional tests that use the abstractions of words to define “abstract ideas.” Nonetheless, in characterizing its prior decisions in Benson, Flook & Diehr, the Court did offer some guidance that will surely be the subject of intense discussion among patent attorneys and commentators for many months.

What happens next for Bilski & Warsaw? Attorneys will now work within the guidance provided by the Court to revise the Bilski/Warsaw claims and obtain patent protection. According to Mike Jakes, the attorney at Finnegan Henderson who argued the case to the Court, “In reaffirming that section 101 of the Patent Act should be interpreted broadly, the Court’s decision will encourage continued innovation in today’s information economy.”

4 comments to Bilski Inventors Comment on Decision

  • gus3

    Sigh. From the very title, this is so wrong. Mathematics and mathematical algorithms aren’t “invented,” and any mathematician can tell you that. Even Paul Erdos never claimed to do anything new with math; he only claimed discoveries that (to the best of his knowledge) no human had ever see before. Are Bilski and Warsaw claiming to be greater mathematicians than the greatest mathematician of the 20th Century? If so, they are only exposing their own foolishness.

    I can hear it now: “But the USPTO granted their patent!” Big deal. The USPTO is now a parody of itself and its Constitutional mission, granting all kinds of patents that should never have been granted. The Bilski/Warsaw patent is just such a one, as the SCOTUS rightly recognized.

  • Yes, mathematicians don’t truely invent the material in ther patents, just as so many other patented material isn’t invented. Robert Ambrogi says that the lesson to be learned from the Bilski’s case is to avoid abstraction. Read the IMS newsletter article here.

  • Nice but don’t think Bilski and Warsaw are greater mathematicians than the greatest mathematician of the 20th Century? Discovering wheel for the second time is not a very outstanding thing…

  • anon

    “I can hear it now: ‘But the USPTO granted their patent!’”

    Nope. See page 3 of the opinion: “The patent examiner rejected petitioners’ application… The Board of Patent Appeals and Interferences affirmed…. The United States Court of Appeals for the Federal Circuit heard the case en banc and affirmed.”

    And then of course, the Supreme Court affirmed.

    This patent application was rejected at every step along the way; as it should have been.