In a much-anticipated decision, the US Supreme Court has struck down a patent that became ensnared in arguments over what should and should not be patentable.

But the court’s decision seems to carefully sidestep that broader discussion – and the implications it could have held for gene patents.

All year, the biotechnology industry has been waiting with bated breath for a ruling in the case Bilski v Kappos. Although the case dealt with the patentability of a method for trading commodities on the energy market, many felt the ruling would have implications for the practice of patenting processes, including gene testing.

These fears stemmed from a federal appellate court ruling which found the Bilski method unpatentable because it failed the so-called ‘machine-or-transformation test’ – meaning that it neither contributed to the construction of a machine, nor transformed anything from one state to another. Using these standards to define what is patentable could jeopardize many gene patents, the industry feared.

But the Supreme Court ruled that although the Bilski method was itself not patentable, the federal appellate court had erred in using the machine-or-transformation test to guide its decision. Further, the Court avoided providing a catch-all test of what is or is not patentable: “The patent application here can be rejected under our precedents on the unpatentability of abstract ideas,” Justice Anthony Kennedy wrote. “The Court, therefore, need not define further what constitutes a patentable ‘process’.”

Image: photo by Rob Crawley via Flickr under creative commons.