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Bilski v. Kappos (2010, USA)

See: Bilski: analysis of Supreme Court decision and Patentability in the USA after Bilski

Bilski v. Kappos (originally named Bilski v. Doll) is the name of the case in the USA where the Supreme Court reviewed the CAFC's 2008 in re Bilski ruling. The hearing was held in November 2009 and the decision was delivered in June 2010. Bilski was important because it was the first time since 1981 (Diamond v. Diehr) that the Supreme Court gave a ruling about whether or not a certain patent was valid patentable subject matter.

(See: the court hearing transcript and ESP's analysis of the hearing)

The patent being defended by Bilski is on a business method,[1] but the test created in the in re Bilski ruling - the "particular machine or transformation" test - is broad enough to block the patenting of some software ideas too. The in re Bilski ruling has already been used by the USPTO to reject certain software patent applications,[2] and a District Court has used it to invalidate a patent.[3]

To help brainstorm for what arguments can be used in similar briefs in future, see Bilski brainstorming.


  • 2009-09-25: Deadline for the Respondent (Mr. Bilski et al)[4] - thus the deadline for third-party briefs should be 7 days later, October 2nd.
  • 2009-11-09: Oral argument.[5] (See: the court hearing transcript and ESP's analysis)
  • 2009-06-28: Ruling handed down[6]

Questions posed to the Supreme Court

The Supreme Court has accepted to review this ruling for the purpose of answering two questions:[7]

Whether the Federal Circuit erred by holding that a "process" must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing ("machine-or- transformation" test), to be eligible for patenting under 35 U.S.C. §101, despite this Court's precedent declining to limit the broad statutory grant of patent eligibility for "any" new and useful process beyond excluding patents for "laws of nature, physical phenomena, and abstract ideas.", and
Whether the Federal Circuit's "machine-or-transformation" test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect "method[s] of doing or conducting business." 35 U.S.C. §273.

Related pages on ESP Wiki

External Links

The hearing, November

Coverage of initial announcement of the case

  • Bloomberg News - The Supreme Court of the USA have decided to review the in re Bilski ruling - June 1, 2009
  • SCOTUS Blog - Court to rule on “methods” patents - June 1, 2009
  • Prior Art Blog - Handicapping Bilski at the Supreme Court - June 1, 2009
  • The Blog of Legal Times - Supreme Court Will Hear Bilski Patent Case - June 1, 2009
  • IP Watchdog - US Supreme Court Grants Cert. in Bilski - June 1, 2009
  • PatentlyO - Bilski v. Doll: Reconsidering Patentable Subject Matter - June 1, 2009

Later analyses