Life after Bilski

68 Pages Posted: 17 Dec 2010 Last revised: 29 Apr 2020

See all articles by Mark A. Lemley

Mark A. Lemley

Stanford Law School

Michael Risch

Villanova University Charles Widger School of Law

Ted M. Sichelman

University of San Diego School of Law

R. Polk Wagner

University of Pennsylvania Law School

Date Written: December 13, 2010


In Bilski v. Kappos, the Supreme Court declined calls to categorically exclude business methods - or any technology - from the patent law. It also rejected as the sole test of subject matter eligibility the Federal Circuit’s deeply-flawed "machine or transformation" test, under which no process is patentable unless it is tied to a particular machine or transforms an article to another state or thing. Subsequent developments threaten to undo that holding, however. Relying on the Court’s description of the Federal Circuit test as a "useful and important clue', the U.S. Patent and Trademark Office, patent litigants, and district courts have all continued to rely on the machine-or-transformation test in the wake of Bilski: no longer as the sole rule, but as a presumptive starting point that threatens to effectively become mandatory. In this Article, we suggest a new way to understand the exclusion of abstract ideas from patentable subject matter. No class of invention is inherently too abstract for patenting. Rather, the rule against patenting abstract ideas is an effort to prevent inventors from claiming their ideas too broadly. By requiring that patent claims be limited to a specific set of practical applications of an idea, the abstract ideas doctrine both makes the scope of the resulting patent clearer and leaves room for subsequent inventors to improve upon - and patent new applications of - the same basic principle. Recasting the abstract ideas doctrine as an overclaiming test eliminates the constraints of the artificial machine-or-transformation test, as well as the pointless effort to fit inventions into permissible or impermissible categories. It also helps understand some otherwise-inexplicable distinctions in the case law. Testing for overclaiming allows courts to focus on what really matters: whether the scope of the patentee's claims are commensurate with the invention’s practical, real-world contribution. This inquiry, we suggest, is the touchstone of the abstract ideas analysis, and the way out of the post-Bilski confusion.

Keywords: patents, law, Bilski, invention, MOT, patentable subject matter, 101, Diehr, business methods, software, Federal Circuit

JEL Classification: K20, L51, O31, O34

Suggested Citation

Lemley, Mark A. and Risch, Michael and Sichelman, Ted M. and Wagner, R. Polk, Life after Bilski (December 13, 2010). Stanford Law Review, Vol. 63, pp. 1315-1347, 2011, Stanford Public Law Working Paper No. 1725009, San Diego Legal Studies Paper No. 11-046, U of Penn, Inst for Law & Econ Research Paper No. 11-02, U of Penn Law School, Public Law Research Paper No. 11-05, Villanova Law/Public Policy Research Paper No. 2012-2003, Available at SSRN:

Mark A. Lemley

Stanford Law School ( email )

559 Nathan Abbott Way
Stanford, CA 94305-8610
United States

Michael Risch

Villanova University Charles Widger School of Law ( email )

299 N. Spring Mill Road
Villanova, PA 19085
United States


Ted M. Sichelman

University of San Diego School of Law ( email )

5998 Alcala Park
San Diego, CA 92110-2492
United States
(619) 260-7512 (Phone)
(619) 260-2748 (Fax)

HOME PAGE: http://

R. Polk Wagner (Contact Author)

University of Pennsylvania Law School ( email )

3501 Sansom Street
Philadelphia, PA 19104
United States
267-433-4431 (Phone)

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