Under Section 101 of the Patent Act, 35 U.S.C. § 101, an “idea” is not patentable, but a “process” may be. On June 1, 2009, the Supreme Court granted certiorari in Bilski v. Doll, No. 08-964, to decide when a “process” is patent-eligible.

Bilski has already generated considerable interest in the business community—nearly 40 amicus briefs were filed in the Court of Appeals for the Federal Circuit when it considered the case en banc. Although the patent-in-suit is narrow, the Supreme Court’s resolution of the case could affect the patentability of business methods, computer software, and financial instruments.

The invention at issue in Bilski is a method for hedging risk in commodity prices. The patent application seeks protection for a method of purchasing commodities with a certain risk position, identifying market participants with the opposite risk position, and initiating a series of transactions to balance the positions. The patent examiner denied the application, finding that the invention was not directed at the “technological arts,” because it merely solved a mathematical problem. The Board of Patent Appeals and Interferences affirmed, but on a different ground. Rejecting the examiner’s “technological arts” test, the Board denied a patent because the invention does not contemplate the transformation of physical subject matter from one state to another. The applicants appealed to the Federal Circuit, which decided to give the case initial en banc consideration and solicit the views of amici. That court held that a “process” is patentable only if it is “tied to a particular machine or apparatus” or “transforms a particular article into a different state or thing.” 545 F.3d 943, 954 (Fed. Cir. 2008). Applying that standard, the court found that Bilski’s invention was ineligible for patent protection.

Absent extensions, which are likely, amicus briefs in support of the petitioners (or of neither party) will be due on July 23, 2009, and amicus briefs in support of the respondent will be due on August 24, 2009. Any questions about this case should be directed to Dan Himmelfarb (+1 202 263 3035) or Andrew J. Pincus (+1 202 263 3220) in our Washington, DC office.

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