Patent Process Claims Impacted by U.S. Court of Appeals for the Federal Circuit

11/12/2008

The U.S. Court of Appeals for the Federal Circuit has issued a ruling in In re Bilski that modifies the test of whether a “process” qualifies as patentable subject matter. Although Bilski had been frequently discussed in the context of “business method” patents, the Federal Circuit’s ruling applies to all process claims - and not just business method claims. Accordingly, the Bilski decision may unexpectedly have a significant impact for many patentees and patent applicants.

The essential holding of Bilski is that, for any claimed process to qualify as patentable subject matter, it must either: (1) transform a particular article into a different state or thing, or (2) be tied to a particular machine or apparatus. The Federal Circuit also noted that: (1) recitation of a transformation of an article or recitation of a specific machine must not be a mere field-of-use limitation, but must impose a meaningful limit on the claim’s scope, and (2) the involvement of the transformation or the machine in the claimed process must be “central to the purpose of the claimed process.”

The “transformation” prong of the test does not represent a change from long-standing law. The Federal Circuit referred to transformation of “a particular article,” but also discussed with approval the decision of its predecessor court in In re Abele, where data was electronically transformed into a visual depiction that represented a physical object, even though the physical object itself was not transformed.

With respect to the “machine” prong of the test, the Federal Circuit explicitly rejected the prior test formulated a decade ago in State Street, where it was only necessary to find a “practical application” involving a “useful, concrete and practical result” to be patentable. This change in focus was critical in the Bilski case. Bilski’s claims were generally regarded as meeting the State Street standard, but the claims did not recite a machine or apparatus. Without any recitation of a machine or apparatus in Bilski’s claims, the Federal Circuit declined to apply the “machine” prong of the test (and held that Bilski’s claims were not patentable subject matter). Further, the court stated it would leave to future cases “the elaboration of the precise contours of machine implementation, as well as … whether or when recitation of a computer suffices to tie a process claim to a particular machine.”

While Bilski has left to future cases the determination of whether claims to some processes will or will not be patent eligible, one clear lesson is that, when preparing any new patent application that involves a process, the applicant should thoroughly describe (1) any aspect that involves a transformation of an article into a different state or thing, and (2) any machine or apparatus that is associated with the process.

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