By Robert M. HirningRobert M. Hirning is a registered patent attorney at Oppenheimer, Wolff, and Donnelly, LLP in
Minneapolis. His practice focuses on patent prosecution and counseling for the
computer and electronic arts, including internet-related technologies, electronic medical devices,
consumer electronics, and business methods.
A complete version of this article appears at: http://www.oppenheimer.com/Attorneys/Detail.aspx?id=652
The Federal Circuit’s en banc decision of in re Bilski and its
“machine-or-transformation” test will not be the final word for the patentability of
processes under 35 USC §101. The Supreme Court will review the Bilski
decision and its application of the machine-or-transformation test in its 2009-2010 term.
Bilski’s machine-or-transformation test, purportedly originating from previous
Supreme Court decisions (most recently Gottschalk v. Benson and Diamond v.
Diehr) requires processes to be (a) tied to a particular machine or apparatus, or (b) transform a
particular article into a different state or thing to satisfy §101.
Even if the machine-or-transformation requirement is abandoned by the Supreme
Court, patent practitioners need to respond to §101 issu...
