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10 Tips to Avoid a “Diehr in the Headlights” Reaction to Bilski for Computer-Implemented Inventions

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.

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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...

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