Information Age Patent Eligibility

Justice Scalia did not sign on to the portion of Bilski v. Kappos cited below. With Justice Scalia having been replaced by Justice Gorsuch, it will be interesting to see if the subject matter of the below quote gets more traction or even categorical approval once Justice Kennedy’s replacement is installed.

The machine-or-transformation test may well provide a sufficient basis for evaluating processes similar to those in the Industrial Ageā€”for example, inventions grounded in a physical or other tangible form. But there are reasons to doubt whether the test should be the sole criterion for determining the patentability of inventions in the Information Age. As numerous amicus briefs argue, the machine-or-transformation test would create uncertainty as to the patentability of software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals. See, e.g., Brief for Business Software Alliance 24-25; Brief for Biotechnology Industry Organization et al. 14-27; Brief for Boston Patent Law Association 8-15; Brief for Houston Intellectual Property Law Association 17-22; Brief for Dolby Labs., Inc., et al. 9-10.

In the course of applying the machine-or-transformation test to emerging technologies, courts may pose questions of such intricacy and refinement that they risk obscuring the larger object of securing patents for valuable inventions without transgressing the public domain. The dissent by Judge Rader refers to some of these difficulties. 545 F.3d, at 1015. As a result, in deciding whether previously unforeseen inventions qualify as patentable 3228*3228 “process[es],” it may not make sense to require courts to confine themselves to asking the questions posed by the machine-or-transformation test. Section 101’s terms suggest that new technologies may call for new inquiries. See Benson, supra, at 71, 93 S.Ct. 253 (to “freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology[,] . . . is not our purpose”).

Bilski v. Kappos, 130 S. Ct. 3218, 3227-28 (2010)(Justice Kennedy writing for himself, Chief Justice Roberts, and Justices Thomas and Alito).

Comments are closed.