“Federal Circuit Continues to Develop Test for Patentable Subject Matter after Supreme Court’s Bilski Decision,” Bret A. Hrivnak, Esq. and Angelo R. Trivisonno, Law Clerk

Bret A. Hrivnak

Under Section 101 of the Patent Act, patentable subject matter includes “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. . .” The precise definition of “process,” however, has eluded both the courts and patent practitioners for many years, especially when considering computer-related processes. Before the Supreme Court addressed the issue last summer, courts had relied on the “machine or transformation” test established by the Federal Circuit as the sole criterion for patentability. In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) determined that an invention is a patentable “process” under the Patent Act only if (1) “it is tied to a particular machine or apparatus,” or if (2) “it transforms a particular article into a different state or thing.”

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