In re Bilski: Patenting Processes

In re Bilski, __ F.3d __ (Fed. Cir. 2008)(en banc): The Federal Circuit affirmed the decision of the Board of Patent Appeals (BPAI) that Bilski's claimed invention for a method of hedging risks in commodities trading does not satisfy the patentable subject matter requirements of 35 U.S.C. § 101.

 

Here’s the test for patentable subject matter: “A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.”  The Federal Circuit’s standard is different than the one articulated in State Street, which stated that the proper inquiry is whether the invention yielded a "useful, concrete, and tangible result".  However, the Federal Circuit clearly took great pains to adhere to Supreme Court precedent.

 

Much has been written about In re Bilski, but go get the best analysis that money can’t buy: read if for yourself and see what you think (http://www.cafc.uscourts.gov/opinions/07-1130.pdf).