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constitutes an unpatentable abstract idea." While SCOTUS did not specifically deal with the patentability of software, "the court did not make any statement that would appear to go against the con- cept of the patentability of software in the U.S.," says Abecassis. "As a result, patent applicants who want to protect software innovations do not yet have a clear test to determine whether or not their software invention represents a patentable inven- tion in the U.S." The U.S. court delivered qualified good news for patentability of business-method patents, however it was critical of 1998's State Street Bank & Trust Co. v. Signature Financial Group Inc., in which the U.S. Court of Appeals for the Federal Circuit expanded the scope of possible business- method patents by allowing patents as long as they created a "useful, concrete, and tangible result." This was too broad and part of what led SCOTUS to take on Bilski in the first place, say observers. In Bilski, the majority states that nothing in its holding "should be read as endorsing" the State Street interpretation of s. 101. "They took away with one hand and gave with the other," said Joe Conneely, a partner at McCarthy Tétrault LLP in Toronto. The Supreme Court's stand on Bilski can be seen as a middle ground between the "open the floodgates" standard set by State Street and the restrictive "machine or transformation" test in Bilski. The latest position will likely mean the current brisk pace of U.S. patent litigation will not slow. Conneely wrote recently that following the SCOTUS decision, "it can be expected that the Federal Circuit will be busy defin- ing limits and exceptions for the 'machine- or-transformation' test, and may be called upon to develop additional tests and cri- teria for determining patent eligibility — especially in respect of business methods." Additional tests could affect how patents for business methods, software, and other processes are drafted, prosecuted with the U.S. Patent and Trademark Office, and ultimately how patents are enforced. Finally, the decision split the justices in several key areas. The 5-4 ruling to sup- port the patentability of business methods almost swung the other way as retired justice John Paul Stevens, who wrote what appeared to be the majority, appeared ntitled-4 1 Teamwork, drive, determination As important in law as it is in sport. In our experience, when a team pulls together with drive and determination, they get results. When you're looking for ip counsel with a winning attitude – and record to match – contact the team at Dimock Stratton. Dimock Stratton llp experience. results. 20 Queen W. 32nd fl, Toronto | 416.971.7202 | dimock.com www. C ANADIAN Law ye rmag.com OC T O BER 2010 47 9/13/10 9:43:14 AM to lose a pivotal vote in the end. "The minority opinion was much longer than the majority opinion," observed Adam Mizera, a lawyer at Robic LLP in Montreal. Stevens' 47-page opinion compares with 16 pages from Kennedy, which one U.S. law blog found "quite short" considering the case took 231 days to decide. "Unless one of the Supreme Court judges writes his memoirs," adds Mizera, what really happened in Bilski will remain as murky as the future of business-method patents. This fall, the attention of the Canadian IP community will shift to the Federal Court of Appeal where Amazon.com Inc. has filed an appeal over its pursuit of a patent for its "one-click" e-commerce innovation. Amazon developed a system whereby an online customer is required to click just once to buy an item on its web site through the use of computer "cookies" which record a customer's IP address and