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By A. Jose Cortina, Ward and Smith, P.A.

Editor’s Note: A. Jose Cortina is a member of the Intellectual Property Group of Ward and Smith P.A.

On Monday, Nov. 9, the U.S. Supreme Court heard oral arguments in the case of Bilski v. Kappos. The specific issue addressed in the case was whether the Federal Circuit’s standard requiring that a method must be either tied to a particular machine or achieve a transformation to be eligible for patent protection should be reversed. Section 101 of the patent statute recognizes that laws of nature, natural phenomenon and abstract ideas may not be patented.

In the patent application of Bilski, the claims merely covered a series of transactions between a commodity provider and market participants without involvement of a machine. The U.S. Patent Office had ruled the method did not qualify for patent protection and the Federal Circuit agreed.

At one point in the hearing the Justices raised a question about whether there is a technical component required for patents. Mr. Michael Jakes, Bilski’s attorney, was asked by the Justices whether there needed to be a technical component to a business method before it qualified as patent eligible subject matter. Mr. Jakes pointed out that surgical methods performed by a doctor, all composed of entirely human activity, have long been patentable.

Notwithstanding these arguments, a review of the transcript suggests that the Justices in general were not sympathetic to the overall idea of extending patent protection to business methods.

However, later in the hearing, Mr. Malcolm Stewart, who argued on behalf of the government, maintained a rigid position urging that the Federal Circuit standard should be upheld so that in order for a method to qualify as patent eligible, it must either be tied to a particular machine or cause a transformation. This argument also met with considerable skepticism, with one Justice pointing out that with such an interpretation a computer could be added to any idea to make it a patentable "machine."

What is clear from the transcript is that neither side urged abolishing software patents. However, various comments by the Justices suggested that while this may not be the appropriate case to rule on whether software is eligible subject matter for patent protection, it was clear that some were skeptical. For example, Justice Stevens pointed out that an old computer programmed with a new program is not a "new machine." Mr. Stewart urged that the Bilski case was inappropriate for resolving hard questions relating to software, because the invention in question does not involve computer software.

Overall, the transcript gives the impression that while several of the Justices were skeptical about software patents, the issue of whether software is patent eligible subject matter will not be addressed in the decision. On the other hand, although it appears that the majority of the Justices were clearly troubled by the idea of allowing patent protection to extend to business methods, they also appeared dissatisfied with the Federal Circuit’s rigid test.

If I were to predict the result, it is that patents on "pure" business methods are unlikely to be upheld, but that the Federal Circuit test will be found to be too rigid and restrictive. What appears sure is that it is unlikely that the decision will have much impact on the current status of patents covering software inventions.

Ward and Smith, P.A. provides a multi-specialty approach to the representation of technology companies and their officers, directors, employees, and investors. A. Jose Cortina practices in the Intellectual Property Group, where he concentrates his practice on patents, trademarks, copyrights and related matters. Comments or questions may be sent to

This article is not intended to give, and should not be relied upon for, legal advice in any particular circumstance or fact situation. No action should be taken in reliance upon the information contained in this article without obtaining the advice of an attorney.