BIO Commends Supreme Court for Expansive View of Patentability in Bilski Decision

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Decision Recognizes ‘Machine or Transformation” Test May Not Apply To Biotech and Other New Technologies

Washington, D.C. (June 28, 2010) – The Biotechnology Industry Organization (BIO) released the following statement in reaction to the Supreme Court’s decision to uphold the lower court’s ruling in Bilski v. Kappos.

“In our amicus brief, BIO urged the Supreme Court to overturn the lower court’s rigid new test for determining whether a method or process is eligible for patenting. We are pleased that the Justices crafted a narrow opinion that does just that. The Court was clearly conscious of the potential negative and unforeseeable consequences of a broad and sweeping decision,” stated BIO President and CEO Jim Greenwood.  “This ruling specifically states that the ‘machine-or-transformation test is not the sole test for patent eligibility’ and recognized that the lower court’s ruling could have created uncertainty in fields such as advanced diagnostic medicine techniques.”

“In the Diamond v. Chakrabarty decision in 1980, the Supreme Court defined patent-eligible subject matter in a flexible and inclusive way that has fostered the tremendous growth of biotechnology for the benefit of millions of patients, farmers, and other consumers around the world,” continued Greenwood.  “We are pleased that the Court made it clear in today’s decision that the patent system was designed to be broad and inclusive in order to promote innovation.  Strong intellectual property protection is critical to our nation’s economy and global competitiveness.”

In an amicus brief filed last year, BIO urged the Supreme Court to overturn the decision of the U.S. Court of Appeals for the Federal Circuit which created a new test under which a method or process is only patent-eligible if it is tied to a specific machine or if it transforms a particular article or substance to a different state or thing. This “machine-or-transformation” test was, until today, the only way to determine the patent-eligibility of a patent application before it is examined for novelty, inventiveness, and usefulness.

BIO’s amicus brief is available at http://bio.org/ip/amicus/documents/08-964tsacBiotechnologyIndustryOrganizationetal.pdf.

About BIO

BIO represents more than 1,200 biotechnology companies, academic institutions, state biotechnology centers and related organizations across the United States and in more than 30 other nations. BIO members are involved in the research and development of innovative healthcare, agricultural, industrial and environmental biotechnology products. BIO also produces the BIO International Convention, the world’s largest gathering of the biotechnology industry, along with industry-leading investor and partnering meetings held around the world.

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