Today the US Supreme Court affirmed the determination in Bilski that the patent at issue was invalid, but rejected the Federal Circuit’s holding that the “machine-or-transformation” test was the sole test for determining patentability of a process under 35 U.S.C. 101. The Supreme Court held that use of this test as a being determinative for patentability (as opposed to being useful and/or giving a clue as to whether something meets the statutory criteria for patentability) improperly reads additional requirements into patentability statutes and violates statute interpretation principles. Fueled by hi-tech inventions where subject matter is no longer always grounded in traditional industrial tangible materials, the Supreme Court envisioned that patentable processes in the Information Age may fail the “machine or transformation” test yet still be patentable subject matter. The Supreme Court did not want to fix the Section 101 on a test that may not apply for emerging technologies and which would not serve the statutory provisions of Section 101. The Supreme Court also rejected a blanket rule banning patentability for business methods as a category of unpatentable subject matter. Rather, in order to be patentable as a process under Section 101, the invention must meet the statutory criteria for patentability under 35 U.S.C. 102, 103, 112, as well as not be abstract. In rejecting exclusive use of the “machine or transformation” test, the Supreme Court left open the possibility that the in the future the Federal Circuit may develop other limiting criteria that is not inconsistent with the text of Section 101.
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