“Machine-or-Transformation” Test Determines Patent Eligibility of Process Invention
Alexandria, Va. (October 30, 2008)—Patent Resources Group has issued the following brief analysis of the decision in the In re Bilski case handed down today from the Court of Appeals for the Federal Circuit.
In a 9-3 decision, the Court of Appeals for the Federal Circuit today held that a process is not eligible for patent protection, unless it either (1) is tied to a particular machine or apparatus, or (2) operates to transform an item into a different state or thing. The court affirmed the decision of the Board of Patent Appeals and Interferences of the United States Patent Office upholding the rejection of a patent application directed to a method of hedging risk in the field of commodities trading.
The court acknowledged that “the Supreme Court may ultimately decide to alter or perhaps even set aside this test to accommodate emerging technologies,” and that the Federal Circuit itself “may in the future refine or augment the test or how it is applied.”
The court’s decision thus leaves the future of process patents, including business method patents, uncertain. Inventors, their employers, investors and competitors are unable to predict with any reasonable degree of assurance how their process patents and patent applications, and those of their competitors, will fare in the USPTO and courts.
Academic Director Paul Gardner is available to provide further analysis and commentary. Gardner has more than 40 years experience in patent law and has litigated more than 100 cases. Media interested in speaking with Mr. Gardner should contact Daniel Waldman at 410-962-6447.