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CONTACT: Mike Wendy
June 28, 2010
(202) 969-2957
PFF's Sydnor Says Bilski Order Moderate and Sensible
Supreme Court's Decision Stresses Need for Careful Examination by PTO

WASHINGTON D.C. — This morning, the U.S. Supreme Court (SCOTUS) issued its long awaited Order in Bilski et al. v. Kappos, a dispute involving whether a process hedging against price fluctuations in the energy commodities market could be patented. SCOTUS affirmed the Federal Circuit's judgment, but held that the "machine-or-transformation test" is not the only test for determining the patentability of a "process." The following statement can be attributed to Thomas D. Sydnor II, Senior Fellow and Director of the Center for the Study of Digital Property at the Progress & Freedom Foundation:

The Court's decision in Bilski adopted the sort of moderate, sensible position that many had expected. The Court thus rejected implausible bright-line rules that would prohibit the patenting of any subject matter—be it a business method or software—that otherwise satisfies the requirements for patentability.
The flexibility that the Bilski ruling preserves should promote innovation by ensuring that patents can still protect a broad range of American creativity. Bilski also reminds us of the critical role of the U.S. Patent & Trademark Office: Flexibility requires careful examination of patent applications, particularly in areas, like business methods, in which prior art may be incompletely collected or indexed.
In Bilski, the Court also re-affirmed its commitment to interpreting intellectual-property laws according to the usual rules of statutory interpretation and warned judges not to read into them 'limitations and conditions which the legislature has not expressed.' That timely warning should prompt an immediate reconsideration of Judge Stanton's erroneous summary-judgment ruling in Viacom v. YouTube.

Thomas Sydnor is available for comment. Please contact Mike Wendy at for more information.

The Progress & Freedom Foundation is a market-oriented think tank that studies the digital revolution and its implications for public policy. It is a 501(c)(3) research & educational organization.



The Progress & Freedom Foundation