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Business Methods Still Patent Eligible

The US Supreme Court on June 28th released its long awaited opinion in the case of Bilski v. Kappos, No. 08-964. 

While finding that the claimed Bilski invention at issue was an unpatentable abstract idea, the Court also held that, while useful, the rigid “machine-or-transformation” test was not to be the sole test used to determine if a "process" was patentable subject matter.  This machine-or-transformation test was previously adopted by the Federal Circuit as the exclusive test to determine if a process such as a business method was patent eligible.  The claimed Bilski invention concerned a method for minimizing the economic risk resulting from fluctuating market demand for energy as well as an application utilizing the method.

 The majority found that the patent laws do not exclude all business method processes as patent eligible.  However, because the Court found the claimed invention at issue to be an unpatentable abstract idea, the Court declined to define further what would constitute a patent eligible process, choosing instead to refer to the definition of process in the patent laws and to 150 years of precedent affirming the unpatentability of abstract ideas, such as algorithms and mental processes capable of being reduced to mathematical formulas.  A minority of four Justices concluded that a business method was not a process under the patent laws and should not be patent eligible.  It is noted that, even if an invention is found to be patent eligible subject matter, in order for a patent to issue the invention must be novel, useful, and non-obvious in view of the prior art and the application must satisfy the disclosure requirements, so patent eligibility is simply the first hurdle.

Should you have questions, please do not hesitate to contact any one of Greenebaum’s patent attorneys listed.  A copy of the Bilski v. Kappos opinion can be found at

To learn more about James C. Eaves Jr. and his practice, please visit his profile.

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Greenebaum Doll & McDonald PLLC is a widely-respected business law firm with approximately 170 professionals in five offices, serving local, national and international clients in virtually every industry. A forward-thinking business law firm, Greenebaum is committed to the practice of Breakthrough Law®.

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