Narrow Bilski ruling leaves all options open for the future

Washington, D.C., June 29th 2010 — The Supreme Court of the United States delivered its ruling on the Bilski landmark case yesterday. A split court issued a very narrow ruling, avoiding broad decisions on patentability. The Court explicitly refused to weigh in on the scope and limits of the patent system, stating that “nothing in this opinion should be read to take a position on where that balance ought to be struck”.

“We are pleased, but we feel the Supreme Court did not go far enough in banning all patents on abstract ideas such as software and business methods”, comments Benjamin Henrion on the outcome. The President of the Foundation for a Free Information Infrastructure (FFII) has a 10 years record of promoting patent reforms in the European Union, often to prevent “deterioration to US patenting standards”.

The Court also commented on the machine-or-transformation test, which had been devised by the lower court as a test for patent eligibility and used to reject the Bilski patent. The Court accepted the test only as a “useful investigative tool”, but decided it could not serve as an exclusive criterion to decide patentability, thus frustating hopes for limits on the patentability of business methods and software.

FFII analyst Geza Giedke comments: “The court declined to clean up the American patent mess; it recognized that a new and delicate balance had to be struck between patent protection and innovation in the Internet age but refused to provide a clue, leaving us without a map to walk the same patent minefield as before”.

“The legislator must now take over to prevent the patent offices from flip-flopping like they already did for the past twenty years” adds FFII patent expert Georg Jakob.

“If the system is unable to provide a cure, it is the legislator’s turn” affirms Rene Mages, Vice-President from the FFII. “We now need a legislation which fits modern software market realities and defends the public interest”.


The machine-or-transformation test is a test of patent eligibility in United States patent law. Under the test a claim to a process qualifies to be considered for patenting only if it (1) is implemented with a particular machine, that is, one specifically devised and adapted to carry out the process in a way that is not concededly conventional and is not trivial; or else (2) transforms an article from one thing or state to another.

For more details, see:

This test was first proposed by the Court of Appeals for the Federal Circuit (CAFC) in its ruling on a business method patent claim on the patent application 08/833,892 in 2009 (“In re Bilski”). The patent claims involved a method of hedging risks in commodities trading. The CAFC affirmed the rejection of the patent claims and reiterated the machine-or-transformation test as the applicable test for patent-eligible subject matter, and stated that the test in State Street Bank v. Signature Financial Group should no longer be relied upon.The Supreme Court upheld the rejection of the patent but denied that the test could be the sole criterion to decide eligibility. The FFII had contributed its expertise as Amicus Curiae to the United States Supreme Court.

For more details, see:



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About FFII

The FFII is a not-for-profit association, dedicated to the development of information goods for the public benefit, based on copyright, free competition, and open standards. More than 1,000 members, 3,500 companies and 100,000 supporters have entrusted the FFII to act as their voice in public policy questions concerning exclusion rights in data processing.

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