Bilski v Kappos: a year in review

Abstract

On 28 June 2010 — the end of that Term — the US Supreme Court issued its much awaited decision on patent-eligible subject matter in Bilski v. Kappos, 130 S. Ct. 3218 (2010) (‘Bilski III’). In Bilski III, Justice Anthony Kennedy, writing for the majority, confirmed the continued viability of so-called ‘business method’ patents. Prior Current Intelligences have reported on the progress of the Bilski cases at the US Court of Appeals for the Federal Circuit (‘Federal Circuit’) and at the Supreme Court. See Charles R. Macedo, US Supreme Court Returns Patent-Eligibility Test to Fundamental Principles, JIPLP (2010) 5 (11):757-762 (discussing US Supreme Court decision); Charles R. Macedo, Processes must be tied to machine or transform matter to be patent-eligible in the US, JIPLP (2009) 4 (3):151-153 (discussing Federal Circuit en banc decision). Now that a year has passed, JIPLP has commissioned this article to take a look at how Bilski III has been used by the US patent system stakeholders and to provide an initial review of its impact on US patent law. Significantly, over the past year, the US Supreme Court, US Court of Appeals for the Federal Circuit, US District Courts, and the US Patent & Trademark Office (‘PTO’) have all issued decisions impacting the scope of patent-eligible subject matter in the US. Further, the US Congress has likewise considered legislation which could impact the type of subject matter capable of obtaining patent protection in the US. In this article, the developments in each of these venues is discussed.