Intellectual Property Law

Bilski: No machine or transformation, no patentable method, at least for now

By McKee, Voorhees & Sease, P.L.C.

As we reported Thursday, the Federal Circuit has decided In re Bilski, an en banc decision regarding the scope of patentable subject matter.  Specifically, the court addressed what is necessary for a method to fall within the scope of patentable subject matter under § 101.

The court, after examining the relevant Supreme Court cases on the subject (such as Diehr, Benson, and Flook), the court adopted the "machine-or-transformation" test as the applicable test for patent-eligible methods.  In so doing, the court rejected the Freeman-Walter-Abele test (regarding algorithms), the "useful, concrete, and tangible result" test articulated in State Street, and the "technological arts" test described in, for example, Ex parte Lundgren.

As stated by the court:

The machine-or-transformation test is a two-branched inquiry; an applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article.

The machine or transformation must also "impose meaningful limits on the claim's scope" and "must not merely be insignificant extra-solution activity."

The final vote was 9-3, with Judge Dyk writing a concurrence joined by Judge Linn, and Judges Newman, Mayer, and Rader authoring separate dissents.

More detail of In re Bilski and links to coverage from the media and blogs after the jump.

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Full post as published by FileWrapper on November 03, 2008 (boomark / email).