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In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d (BNA) 1385 (Fed. Cir. Oct. 30, 2008) (full-text), cert. granted sub nom., Bilski v. Doll, 561 U.S. __, 129 S.Ct. 2735 (June 1, 2009).

Appellate Court Proceedings[]

In re Bilski was a 2008 en banc decision of the United States Court of Appeals for the Federal Circuit (CAFC) on the patentability of business methods. It was an appeal from a decision of Board of Patent Appeals and Interferences (BPAI) of the U.S. Patent and Trademark Office (USPTO).

The CAFC ruled that the patent application at issue was not tied to a machine and did not result in a transformation,[1] and, therefore, was excluded from patentability.

It reaffirmed the machine-or-transformation test, according to which a claimed process is patent-eligible under 35 U.S.C. §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.

According to the New York Times, the decision "could reshape the way banks and high-tech firms protect their intellectual property."[2] Moreover, as a result of the decision, many business method patents may now be vulnerable to legal assault.[3]

U.S. Supreme Court Proceedings[]

On June 28, 2010, the U.S. Supreme Court handed down its opinion. The Court did not hold, as many had urged, that business methods are unpatentable subject matter. The Justices wrote extensively about the meaning of the term “process” as set forth in Section 101, and why the test for patentability of processes should not exclusively be “the machine-or–transformation test”.

“The machine-or-transformation test may well provide a sufficient basis for evaluating processes similar to those in the Industrial Age—for example, inventions grounded in a physical or other tangible form. But there are reasons to doubt whether the test should be the sole criterion for determining the patentability of inventions in the Information Age. As numerous amicus briefs argue, the machine-or-transformation test would create uncertainty as to the patentability of software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals.


  1. Diane Bartz, U.S. ruling may curb business method patents, Reuters, Oct. 30, 2008.
  2. Court Rules Business Concept Cannot Be Patented, New York Times, Oct. 30, 2008.
  3. Bartz, supra.

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