The U.S. Supreme Court today granted certiorari in In re Bilski, 545 F.3d 943, 88 USPQ2d 1385 (Fed. Cir. 2008). In Bilski, the U.S. Court of Appeals for the Federal Circuit, sitting en banc, held that the "machine-or-transformation" test was applicable for patent-eligible process claims under 35 U.S.C.Section 101 and rejected the "useful, concrete and tangible" test, which is defined in State Street Bank v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir. 1998).
Now stylized as Bilski v. Doll, S.C. Docket No. 08-964, the issue before the Supreme Court is whether a "process" must be tied to a particular machine or apparatus, or transform a particular item into a different state (the machine-or-transformation test), to be eligible for patenting under 35 U.S.C. § 101 and whether the machine-or-transformation test for patent eligibility contradicts congressional intent that patents protect "method[s] of doing business," set forth in 35 U.S.C. § 273.
For more information,click here to read Ballard Spahr's previous Bilski alert. The firm's Intellectual Property Department will continue to monitor and keep its clients informed about this important case.
For information on Bilski and its impact on patent subject matter eligibility for processes, please contact any member of Ballard Spahr's Patents Group.
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