A Madness to the Method?

IP Topics

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This article first appeared in The Intellectual Property Strategist, August 2010.

For more than a year, the software/information technology, financial, and even biotech industries, along with the patent bar, waited for the Supreme Court to weigh in on the issue of business methods and patent-eligible subject matter under § 101 of the Patent Act. In its recent decision in Bilski v. Kappos, 561 U.S. __ (2010), the Supreme Court provided an answer for the business method claimed by Bilski, but not a lot of detailed guidance for future cases. Although reaching the same ultimate conclusion as the Federal Circuit about the unpatentability of Bilski’s claims to a method for hedging risk, the Supreme Court’s opinion effectively overruled the narrow test established by the Federal Circuit in its decision below. The Federal Circuit had established that a claimed process was eligible for patenting only if it was tied to a particular machine or transformed an article into a different state or thing, but the Supreme Court held that the “Machine or Transformation” test is not the exclusive test for determining whether a claimed process is eligible for patenting under the patent statute, 35 U.S.C. § 101.