In re Bilski, __ F.3d __ (Fed. Cir. 2008) (en banc).*
Chief Judge Michel, writing for a nine judge majority, affirmed the Board of Patent Appeals and Interferences’ finding that Bilski’s invention — a commodities trading method for hedging risks — did not meet the 35 U.S.C. § 101 patentable subject matter requirement. The Federal Circuit held that State Street’s "useful, concrete, and tangible result" test was insufficient to determine patentability — disagreements have already started regarding whether State Street was narrowed or overturned. The Federal Circuit held that the Supreme Court’s "machine-or-transformation" test was the only test for determining patentability:
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.
I found Judge Dyk’s concurrence tracing the history of the "machine-or-transformation" test back to the Patent Act of 1793 especially interesting:
In fact, the unpatentability of processes not involving manufactures, machines, or compositions of matter has been firmly embedded in the statute since the time of the Patent Act of 1793, ch. 11, 1 Stat. 318 (1793).
As with any major appellate decision, we will need eighteen to twenty four months of district court and Federal Circuit decisions to flesh out and fully understand Bilski’s implications. While we argue those cases and await the decisions, there will be plenty of law review and blog analysis. Here are some of the first (I will update with additional posts as they come):**
- 271 Patent Blog (glad to see Peter Zura back in the blogosphere);
- IP ADR Blog;
- Likelihood of Confusion;
- Patent Baristas;
- Patently-O (with Crouch’s usual, in-depth analysis);
- The University of Chicago Law Faculty Blog (Randy Picker has an exceptionally detailed take on the opinion); and
- WSJ Law Blog (saying experts are torn as to whether Bilski will make it to the Supreme Court).
* Click here for the opinion.
** I have updated the list of Bilski blog posts with some new ones.