SAN JOSE, Calif. The Supreme Court could issue a decision any day on a controversial case limiting business method and software patents. Legal experts expect the court will uphold the Bilski decision but may call for the Federal Circuit court broaden a test of what can be patentable it set in that case.
In 2008, the Federal Circuit Court upheld a decision from the U.S. Patent and Trademark Office rejecting a 1997 patent application filed by Bernard Bilski on a business method for hedging financial trades. In its decision, the Federal court laid down a controversial test for any patent: it has to be tied to a device or transform something physical.
The Supreme Court heard arguments in the case on November 9. The case has generated debates on what should be patentable.
"I think its almost impossible the Supreme Court would reverse Bilski," said Kevin E. Noonan, a partner at McDonnell Boehnen Hulbert & Berghoff LLP.
"However I do think the court will say while the [Federal Circuit court's] test isn't wrong, it's not the exclusive test and could be applied too rigidly," Noonan said. The Supreme Court might ask for "a more flexible test, but how far they go [in defining one] is anyone's guess," he added.
In comments ruing the oral arguments last fall, " you could hear the court strugling with where they draw the line," Noonan said. "They don't want to make anything patentable but they don't want to restrict innovation either," he said.
"I agree Bilski will be affirmed, and it's a question of how far the Supreme Court goes in addressing the test [for patentability]," said Wesley D. Blakeslee, executive director of Johns Hopkins Technology Transfer.
The attorneys spoke on a Web seminar hosted by a company targeting issues in technology transfer. They said anyone filing software or methods patents should make sure they adhere to the so-called "machine-or transformation" test.
"I think signal processing and machine control patents are unaffected, but you will have to write them differently," said Blakeslee. "Most of the things in control and signal processing patent you can and need to tie to specific events and processes going on, and they will still be patentable under Bilski," he added.
The Supreme Court is expected to issue its decision by the end of its current session which comes in late June or early July. Noonan said the decision could be handed down any day.