By Blake E. Reese, Esq. and Christopher J. Gaspar 1Introduction
On June 1, the U.S. Supreme Court granted certiorari in Bilski -- the
landmark Federal Circuit case affecting the patentability of software and business methods. In
Bilski, the Federal Circuit held that the “machine-or-transformation” test is
the inquiry for determining whether a method qualifies as patentable subject matter. See In re
Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc). The test requires courts -- and the U.S.
Patent and Trademark Office -- to make sure that a method claim is either tied to a particular machine
or transforms an article into a different state or thing in order to be eligible for patenting. The
Federal Circuit’s test also requires that the use of a machine or transformation provides
“meaningful limits” on the claim’s scope and not merely involve
“insignificant post-solution activity.”
The machine-or-transformation test spawned from the Supreme Court’s
1981 decision in Diamond v. Diehr, 480 U.S. 175 (1981). According to the
questions certified, the Supreme Court will likely opine on whether a method claim must satisfy the
machine-or-transformation test to be patentable and whether the test contradicts Congress’s
intent to protect business methods. Members of the IP community will be closely watching the
case to see if it answers quest...
