In its Brief as respondent in Bilski v. Kappos, the Government has taken the position before the Supreme Court that the patentable subject matter must be tethered to technology, and that the Federal Circuit’s test, namely that a patent-eligible process must involve a machine or a transformation of matter.  Activities such as means of performing “economic, social, or legal” tasks, are not, in the Government’s estimation, patentable subject matter unless they qualify under the “machine-or-transformation” test.  Thus, the Government’s position is that Bilski’s claims are not patentable subject matter under this test.

However, an important position that the Government supports is that software when tied to a general-purpose computer should be in most cases patentable subject matter, basing this position off of the Federal Circuit case In re Alappat from 1994, which developed the legal theory that the installation of software itself onto a general-purpose computer transformed the computer into a specialized machine, thereby satisfying the requirements of the “machine-or-transformation” test.

Thus, as expected, the Government has argued against so-called “pure” business methods (and has generally supported the Federal Circuit’s test), and it will remain to be seen if Bilski’s attorneys and the amicus briefs can persuade the Court otherwise.  However, it is extremely important to software companies who wish to patent their inventions that given neither side in the litigation seems to want to prevent software inventions which are patented in association with a general-purpose computer, even if patentable subject matter is restricted to exclude “methods of organizing human activity” (as the Government would prefer), Bilski v. Kappos will almost certainly leave a significant safe harbor for software inventions and most likely business methods which can be reduced to software as well.  Thus, the decisions made by the government in the brief may make some inventors considerably more confident about concerns about successfully overcoming 35 U.S.C. § 101 challenges when submitting applications to the USPTO.