The long awaited U.S. Supreme Court decision on Bilski v. Kappos was issued on Monday, June 28th, 2010.[1] This case was closely followed and the decision eagerly anticipated because it had the potential to limit patent-eligible subject matter regarding processes, which could negatively impact numerous industries. Bilski was seeking to patent a process for hedging risk in trading on the energy commodities market.[2] After a rejection by both the patent examiner and the Board of Patent Appeals and Inferences based on finding the process merely an abstract idea, the Court of Appeals for the Federal Circuit held that since the process was neither coupled with a machine nor transformed an article into another state or thing (i.e. it failed the machine-or-transformation test) the process was not patent-eligible subject matter. Further, the Federal Circuit took the bold step of holding that the machine-or-transformation test is the sole test to determine whether a process is patent-eligible.[3]
With regard to the machine-or-transformation test, the Supreme Court reiterated the standard practice in statutory construction that unless otherwise specifically defined, words must be accorded their “ordinary, contemporary, common meaning.”[4] The Court stated that it was unaware of any “ordinary, contemporary, common meaning” of the word “process” to support tying its meaning to the machine-or-transformation test.[5] Therefore, they rejected the machine-or-transformation test as the sole test for determining the patent-eligibility of a process.[6] However, the Court did state that the machine-or-transformation test can be a useful tool in determining process patent-eligibility.[7]
