A Critique of In Re Bilski

41 Pages Posted: 16 Apr 2013

Date Written: June 1, 2008


Under 35 U.S.C. § 101 (“section 101”), patent protection is provided to “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof . . . .” Industrial age inventions fell easily into at least one of these four statutory categories. Information age inventions, however, complicate the analysis under section 101 and blur the boundaries of its enumerated categories. A common characteristic of these information age inventions, namely software and electronic commerce, is that they are not traditional subjects of patent law. Often times, they are intangible. Hence, in light of their complexity, the Patent Office and the courts struggle to decide whether and to what extent these inventions deserve the protection of the Patent Act.

In 1998, the Court of Appeals for the Federal Circuit radically changed the landscape regarding software and business method patents. Its State Street decision opened the floodgates to business method and software-related claims. Indeed, according to the World Intellectual Property Organization’s statistical report from 2008, the annual growth of patent filings in the field of computer technology between 2001 and 2005 was 5.3%, the highest compared to other fields of technology. This great increase in filings of software-related patents, however, resulted in public pressure to make it more difficult to obtain them.

Recently, the Federal Circuit took a step away from State Street’s broad interpretation of section 101. On October 30, 2008, it decided In re Bilski. The Federal Circuit reconsidered the scope of section 101 and held the “machine-or-transformation” test to be the sole test to determine whether a process is patent eligible. As a result, “a claimed process is surely patent-eligible under section 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.”

This article argues that Bilski’s “machine-or-transformation” test should not be the test to determine patent-eligibility of process claims under section 101. As it will demonstrate, Bilski’s test is ambiguous, inconsistent with Supreme Court precedent, and fails to adequately address the problem courts are really concerned about: the issuance of “bad” and costly patents. If the Supreme Court will not abandon this test, trivial and absurd inventions, such as “a method for swinging on a swing” or a method “for exercising curious animals, especially pet cats” with a laser pointer will continue to be patentable.

Instead of Bilski’s “machine-or-transformation” test, this article will suggest returning to the practical, well-established standards to determine patent-eligibility under section 101: “anything under the sun that is made by man” should be patentable, with the exception of “laws of nature, natural phenomena, or abstract ideas.” Indeed, the subject-matter doctrine is the best mechanism to address the issues raised by “bad inventions.” Under these standards, section 101 would remain flexible and easily applicable. To facilitate the application of these limitations to the field of software, this article will suggest establishing an advisory committee of software experts that will advise the Patent Office and the courts as to the patentability of software inventions under section 101. Consequently, the “gate-keeping” function of section 101 will be successfully preserved.

Suggested Citation

Perel (Filmar), Maayan, A Critique of In Re Bilski (June 1, 2008). DePaul Journal of Art, Technology & Intellectual Property Law, Vol. 20, No. 1, 2009, Available at SSRN: https://ssrn.com/abstract=2252263

Maayan Perel (Filmar) (Contact Author)

Netanya Academic College ( email )

1 Unisversity Street
Netanya, 31905

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