[ffii] Narrow Bilski ruling leaves all options open for the future

Geza Giedke ggiedke at ffii.org
Tue Jun 29 16:39:49 CEST 2010

[ US / Patents / Business methods ]

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

"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".

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

"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
For more details, see: http://en.wikipedia.org/wiki/Bilski


Bilski judgement

Bilski Amicus Curiae Brief of FFII

FFII analysis and information regarding the Bilski case

Permanent link to this press release:


Benjamin Henrion
FFII Brussels
+32-484-56 61 09 (mobile)
bhenrion at ffii.org

About FFII

The FFII is a not-for-profit association registered in twenty European
countries, dedicated to the development of information goods for the
public benefit, based on copyright, free competition, open standards.
More than 1000 members, 3,500 companies and 100,000 supporters have
entrusted the FFII to act as their voice in public policy questions
concerning exclusion rights (intellectual property) in data processing.

More information about the News mailing list