On June 28, owners of business method patents narrowly dodged a bullet. The U.S. Supreme Court ruled, by a scant 5-4 vote, that business methods can indeed be patented.
The decision in Bilski v. Kappos, however, also brought ominous news for these patents. By holding that the business method at issue in the case was unpatentable, the ruling casts a shadow over many existing business method patents.
In Bilski, four justices wanted to add a fourth exception. Retiring Justice John Paul Stevens, joined by Justices Stephen Breyer, Ruth Bader Ginsburg and Sonia Sotomayor, declared that business methods are not patentable.
That almost became the law of the land, according to many observers. "It looks like Justice Stevens wrote the majority opinion and then couldn't keep the votes," says Nancy Linck, a member at Rothwell, Figg, Ernst & Manbeck.
Justice Kennedy gave no indication what those new inquiries should be. He merely stated that the various inventions of the Information Age may or may not be patent-eligible, and he invited the Federal Circuit to try to come up with appropriate new tests.
The ninth member of the court, Justice Antonin Scalia,expressed no view on the proper scope of the machine-or-transformation test.