In Re Bilski and the “Machine-or-Transformation” Test: Receding Boundaries for Patent Eligible Subject Matter

By: Matthew Moore

In order for a hopeful applicant to be granted a patent over his invention, his application must satisfy several procedural and substantive requirements. Among the substantive hurdles that an applicant must clear is the mandate that patents only be issued to applications claiming statutory subject matter within the meaning of §101 of the Patent Act. However, the Court of Appeals for the Federal Circuit (Federal Circuit) has not construed that Section consistently over the years. Since that court’s formation in 1982, it has espoused two tests for statutory subject matter, and each time has substantially abrogated, if not overruled, the prior formulation. Most recently, the Federal Circuit has handed down the “machine-or-transformation” test in an attempt to redraft the limits of patent eligibility based on subject matter. This iBrief will explore the significant changes that this new test has brought to the patentability doctrine.

Cite: 2010 Duke L. & Tech. Rev. 005

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