Intellectual Property Law

Marketing methods not patentable subject matter: no machine or transformation

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

In a recent decision, the Federal Circuit applied the machine-or-transformation test from Bilski to affirm the rejection of all pending claims in a patent application by the Board of Patent Appeals and Interferences.  The claims at issue related to methods of marketing products and "paradigms" for marketing software.  The Board held all claims were not directed to patentable subject matter because they were directed to an "abstract idea."

The Federal Circuit, armed with the machine-or-transformation test, had little trouble affirming the Board.  The court observed Bilski was dispositive on the method claims, as there was no "particular machine or apparatus," nor did the methods "transform any article into a different state or thing."

Similarly, the paradigm claims failed to recite statutory subject matter.  The applicants argued the "company" recited in the claims was analogous to a "machine," and therefore statutory.  The court disagreed, citing In re Nuijten, noting the claims recite no "concrete thing, consisting of parts, or of certain devices and combination of devices."

Of note, the court confirmed its rejection of the "useful, concrete, and tangible result" test from State Street.  The parties had focused on that test in their briefing (which was complete before Bilski was decided).

More detail of In re Freguson after the jump.

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Full post as published by FileWrapper on April 21, 2009 (boomark / email).