Evolution of Patent-Eligible Subject Matter After Bilski


In June 2010, the Supreme Court issued its long-awaited decision regarding patent-eligibility for process claims under 35 U.S.C. § 101. See Bilski v. Kappos, 561 U.S. ___ (2010). Two recent Federal Circuit decisions indicate that the Bilski decision will be interpreted to provide broad, but not unlimited, patent-eligibility in the computer and healthcare arts.

Patent eligibility is determined by 35 U.S.C. § 101, which provides:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title. (emphasis added).

Prior to the Bilski decision, the Federal Circuit en banc held that a process is patent eligible only if "(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing," (hereinafter, "the Machine or Transformation test" or "MoT test"). In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (en banc).

In Bilksi, however, all nine justices agreed that the MoT test is not the sole test for patent eligibility under 35 U.S.C. § 101, overturning the holding by the Federal Circuit. Bilski, slip op. at 8.  

Excerpted from Intellectual Property Today, May 25, 2011. To read the full article, click here (login required).

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