Scary Patents

47 Pages Posted: 3 Jun 2009

Date Written: June 3, 2009


The Federal Circuit, in In re Bilski, announced a new test for patentable subject matter, reversing a decades-long trend that had broadened patent subject matter to include business methods and software. To be patentable under Bilski, a process must (1) be tied to a particular machine or apparatus, or (2) transform a particular article into a different state or thing. The Supreme Court has granted cert. to review Bilski.

Bilski gives little weight to the very statute it is interpreting or to the facts of the relevant Supreme Court cases. The court draws a test from selected language of those cases, while determinedly ignoring other language. Literally taken, the machine-or-transformation test would not achieve the goal of limiting the scope of abstract patents, such as broad business methods and software patents. The brain is a machine, so mental processes would meet the test. Since Turing, software simply transforms a computer into a different state, so all software would be patentable - if we took the test literally. As a thought experiment, the article discusses how the machine-or-transformation test would apply to such innovations as farming, the printing press, the number zero, or the computer.

But Bilski's approach, if not applied rigidly, could have a strong positive influence on the development of patent law. Many broad patents of suspect validity cast a shadow over new technologies. The machine-or-transformation test relies on vague terms and illusory distinctions. But the same is true of the central test for the scope of copyright protection. Although the idea/expression dichotomy is illusory, the analytical framework it provides has served well to adapt copyright to a broad range of subject matter and to new technologies. The machine-or-transformation test could do a similar job for patent law. Bilski's emphasis on the policy that a patent should not preempt a broad area of technology could also supply a unifying principle to the recent case law on enablement, definiteness, and claim interpretation.

Suggested Citation

McJohn, Stephen M., Scary Patents (June 3, 2009). Northwestern Journal of Technology and Intellectual Property, Vol. 7, 2009; Suffolk University Law School Research Paper No. 09-29. Available at SSRN:

Stephen M. McJohn (Contact Author)

Suffolk University Law School ( email )

120 Tremont Street
Boston, MA 02108-4977
United States

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