The Court Giveth "Little", But Taketh Much Away

35 USC 101

The Supreme Court ruled on 28 June 2010  in In re Bilski. The court in effect said the "machine" or "transformation" test is not necessarily the sole test of patentability, but the court neither intended to deemphasize the tests usefulness nor to suggest that many patentable processes live beyond its reach. The State Street test of patentable subject matter having or involving some practical application or, “it produces a useful, concrete and tangible result" is dead, at this time. See the discussion below for background to this decision.

State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998),  was a decision of the United States Court of Appeals for the Federal Circuit concerning the patentability of business methods, which established the principle that a claimed invention, including a business method,  was eligible for protection by a patent in the United States. State Street held in part that patentable subject matter must have or involve some practical application or, “it produces a useful, concrete and tangible result." However in 2008 with the decision, In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. October 30, 2008), an en banc decision, of the United States Court of Appeals for the Federal Circuit (CAFC), on the patenting of business methods based on,” the useful-concrete-tangible,” test, this test was rejected and the portions of the State Street decision relying on that test are no longer of any effect under US patent law.   The Bilski court did however reiterate the machine-or-transformation test as the applicable test for patent-eligible subject matter. The “machine or transformation test”, as interpreted under § 101, is if (1) the claimed subject matter is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” then it is patentable subject matter.  This test is also supported by other patent-eligibility cases some times referred to as the trilogy. So while Bilski significantly narrowed the subject matter allowable under 35 USC 101,  the court did not completely close the door.  With a caveat or subject to a Supreme Court ruling, it may be possible that careful claim drafting techniques will succeed in elevating claim substance, to avoid the impact of the Bilski court decision. The Supreme Court granted certiorari in In re Bilski and oral argument was held on November 9, 2009, and an opinion is expected in 2010.