By
Donald Zuhn —

The
Supreme Court waited until the eleventh hour to issue its long-awaited decision
in Bilski v. Kappos, affirming the
Federal Circuit's determination that an application directed to hedging risk in
energy commodities was not patent eligible while determining that the Federal
Circuit's machine-or-transformation test is not the sole test for assessing patent
eligibility under 35 U.S.C. § 101 (see Patent Docs report on decision).  Reaction to the Supreme Court's
decision in Bilski has, not
surprisingly, come much quicker.

In
a brief statement posted on the
U.S. Patent and Trademark Office website, the Office noted that:

The Supreme Court [on Monday] affirmed the
USPTO's decision that Mr. Bilski's invention was not patentable subject matter
as his claims were drawn to an abstract idea.  Significantly, the Court ruled that the "machine or
transformation" test is not the sole determinant of patent eligible
subject matter for process claims, but is nevertheless an important "investigative
tool" for evaluating their patent eligibility.  The Court also indicated that a business method is, at least
in some circumstances, eligible for patenting under Section 101.

The USPTO will be issuing guidance
further interpreting the decision as soon as possible.  The USPTO is distributing interim
guidance for the examining corps today.

The
Biotechnology Industry Organization (BIO), which along with the Advanced
Medical Technology Association, Wisconsin Alumni Research Foundation (WARF),
and the Regents of the University of California, submitted an amici brief
in the case, issued a press release in which BIO President and CEO Jim
Greenwood said the organization was "pleased that the Justices crafted a
narrow opinion" in which the Court "overturn[ed] the lower court's rigid
new test for determining whether a method or process is eligible for patenting."  Noting that this was the position BIO
had advocated for in its amici brief,
Mr. Greenwood stated that "[t]he Court was clearly conscious of the
potential negative and unforeseeable consequences of a broad and sweeping
decision" and "recognized that the lower court's ruling could have
created uncertainty in fields such as advanced diagnostic medicine techniques."

Pointing
to the Supreme Court's decision in Diamond
v. Chakrabarty — which coincidentally celebrated its thirtieth anniversary
on June 16th (see "BIO
Celebrates Anniversary of Chakrabarty Decision")
— Mr. Greenwood observed that in that case the Court had "defined
patent-eligible subject matter in a flexible and inclusive way that has
fostered the tremendous growth of biotechnology for the benefit of millions of
patients, farmers, and other consumers around the world."  Mr. Greenwood offered that in Bilski, "the
Court made it clear . . . that the patent system was designed to be broad and
inclusive in order to promote innovation."

In
a release issued by the American Intellectual Property Law Association
(AIPLA), the national bar association, which also submitted an amicus brief
in the case, said it was "gratified that the Supreme Court in its Bilski
decision . . . continues to interpret the Patent Act as open to the broadest
range of subject matter, preserving the incentives for yet unknown areas of
innovation."  AIPLA Executive
Director Q. Todd Dickinson stated that the organization was "generally
pleased that the Court's majority today confirmed that broad patent protection
is critical to innovation and economic growth," and that "[t]hey
recognized that the patentability of next generation technology should not be
judged by a last century view of the law."  Mr. Dickinson noted that this was the position that the
AIPLA had advocated for in its own amicus
brief.  The AIPLA release also notes
that "like many others filing amicus (i.e., "friend of the court")
briefs, [the AIPLA] believes that excluded subject matter must be kept to a
minimum because this is the only way to keep the patent system open to crucial
but unforeseen innovations of the future," adding that "because the
course of technology can take an unexpected path, the threshold test for
patentable subject matter ought not become a barrier to the next life-altering
innovation."

The
Licensing Executives Society (LES) offered its comments on the "long-awaited"
decision in a release issued on Monday.  Noting that "[t]he decision has important implications
for industries from health care to high tech," the professional society whose
members are engaged in the transfer, use, development, and marketing of
intellectual property, said that "[m]any throughout the industry,
including a strong representation of our membership, have expressed the view
that a rigid application of that test might stifle both innovation and business
on a global scale, particularly in the Information Age."  LES Public Policy Chair Brian O'Shaughnessy
stated that "[o]verall, we believe the Supreme Court's decision represents
an important step towards maintaining a balanced, effective patent system that
promotes innovation and opportunity for both inventors and consumers."