In re Bilski: A Conversation with Judge Randall Rader and a First Look at the BPAI's Cases

44 Pages Posted: 3 Aug 2009 Last revised: 1 Jun 2014

Date Written: July 5, 2009


The summer of 2008 was a time of great importance the patentability of processes. Indeed, on May 8, 2008 the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) heard a case that many observers signaled as having the potential to become a turning point for this category of patentable subject matter. The case was In re Bilski; its decision on October 30, 2008 confirmed everyone’s expectations of a significant change in the patent system. With 'In re Bilski' the court did not explicitly overrule State Street Bank and Trust Co. v. Signature Financial Group, but certainly took several steps to distant itself from the results reached in that decision ten years before. Indeed, the court reconsidered the State Street test and concluded that it was inadequate to determine whether a process is eligible for patent protection under 35 U.S.C. §101. The court indicated that the appropriate test is rather the machine-or-transformation test previously outlined by the Supreme Court in a number of decisions. 'In re Bilski' is in line with numerous cases that recently have emerged both at the Supreme Court level and at the Federal Circuit to promote a more restrictive view of proper subject matter for patent protection as compared to past decisions. Nevertheless, it is still possible to speculate about the issues that Bilski will generate. The first issue in the aftermath of Bilski is related to the transformation prong of the machine-or-transformation test and consists of the possibility that this requirement will hinder, rather than promote, innovation in the newest fields of endeavor where the need for patent protection is perhaps the highest. A second issue focuses on the machine prong of the machine-or-transformation test. Indeed, commentators have already suggested that this part of the test will result in a return to the 'doctrine of the magic words' described by Cohen and Lemley in 2001. Finally, the last relevant issue raised by In re Bilski regards the Supreme Court’s grant of certiorari on June 1, 2009. Here, it is worth emphasizing that the highest Court’s intervention in a 35 U.S.C. §101 case at this point, is certainly desirable to increase the understanding of the role the current patent system will play in fostering innovation in future technologies. In this article, the author presents a modest attempt at shedding light on the aforementioned issues by analyzing the conversation that she had with Judge Rader on the issuance of In re Bilski and by investigating the cases decided by the Board of Patents Appeals and Interferences that apply this decision.

Keywords: patents, In re Bilski, BPAI cases

Suggested Citation

Fusco, Stefania, In re Bilski: A Conversation with Judge Randall Rader and a First Look at the BPAI's Cases (July 5, 2009). Albany Law Journal of Science and Technology, Vol. 20, No. 123, 2010, Available at SSRN:

Stefania Fusco (Contact Author)

Notre Dame Law School ( email )

1100 Eck Hall of Law
Notre Dame, IN 46556
United States
(312) 961-2955 (Phone)


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