Vviewpoints

DOI: 10.1145/1666420.1666432

Legally speaking
only technological
processes are patentable

On noVEmbEr 9, 2009, the U.S. Supreme Court heard oral argument in the Bilski v. Kappos case. The question is whether a method for hedging risks of price fluctuations of commodities is eligible for patent protection.

My most recent Communications Legally Speaking column, “Are Business Methods Patentable?” (November 2009), suggested the Court’s ruling in Bilski would have implications for the patentability of computer programs. After attending the oral argument in the case, I am now less sure of that.

One thing I am sure of, though, is that Bilski is not going to get his patent. The Court made mincemeat out of Bilski’s main arguments in favor of the patentability of his method. The Justices peppered him with questions and made comments indicating that they thought his arguments were preposterous.

Pho ToGrAPh Cour TEsy oF PAMELA sAMuELson

Hearing the oral argument also convinced me that the Court is unlikely to proclaim that business methods, as such, are ineligible for patenting. The Court instead seems likely to rule that Bilski’s method is unpatentable because it is a nontechnological process.

To implement this standard, the
Court is likely to adopt a “machine or
transformation” test so that the Patent
and and Trademark Office (PTO) and
the courts can distinguish between
technological and nontechnological
processes. Under this test, Bilski’s
method is unpatentable because it is
The main reason Bilski is unlikely to
address software patent issues is that
dozens of software companies and or-
ganizations filed amicus curiae (friend
of the court) briefs explaining that a

broad patent subject matter ruling in Bilski could sweep away patents in this field. (Some amici wanted software patents to be swept away, while others sought to preserve software patents.) The Court will likely leave questions about the patentability of software innovations to future cases.