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Here's Bilski: It's Affirmed, But . . .No Decision on Software Patentability - Updated

By Pamela Jones et al.

Here's the US Supreme Court's opinion [PDF] in Bilski v. Kappos, at last. The lower court's decision is affirmed, and so no patent for Bilski. However, business methods are not found totally ineligible for patents, just this one. But the door is not swung wide open. From the Syllabus:

Finally, while §273 appears to leave open the possibility of some business method patents, it does not suggest broad patentability of such claimed inventions.

I think the State Street and AT&T interpretations of Section 101 by the Federal Circuit just got tossed overboard, as I'll show you in a minute, in favor of Benson, Flook, and Diehr. That's a good thing, if so, since it was State Street that opened the floodgates for software patents. If you recall, one dissent to the US Court of Appeals for the Federal Circuit's opinion in Bilski, the one by Justice Mayer, thought the court had not gone far enough. Why? "State Street has launched a legal tsunami....Patents granted in the wake of State Street have ranged from the somewhat ridiculous to the truly absurd." This Supreme Court opinion acknowledges a need to find a limiting principle. And Benson, Flook and Diehr were the three cases cited as technically correct in the article Groklaw published last year, An Explanation of Computation Theory for Lawyers.

Not everyone on the court agrees in all particulars. So it's complicated, and obviously not all we hoped for. But it's encouraging in some respects as to the future. What is clear is that the "machine or transformation test," while useful, is not the *sole* test for eligibility to obtain a patent. That was what the US Court of Appeals for the Federal Circuit had decided was the sole test. The US Supreme Court decided not to decide today about the patentability of software as a category, but they did provide some guidelines, and they didn't slam the door.

Yes, Justice Ruth Ginsburg is on the bench, despite losing her husband in death yesterday. All the other decisions will be listed here.

Full post as published by Groklaw on June 28, 2010 (boomark / email).