By Robert M. Hirning
Robert 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...