Patent Owners, Patent Litigants, and Those Seeking Patent
Protection Are Advised to Re-evaluate Method Claims of Patents and
Applications in Light of the New Standard.
On October 30, the United States Court of Appeals for the
Federal Circuit, in its highly anticipated In re Bilski
decision regarding so-called "business method" patents,
clarified the test for determining whether a claimed method recites
patent-eligible subject matter. The clarified test will also
determine the validity of issued patents, including those in
litigation. The court, in refusing to extend patent protection to a
method of hedging risk in the field of commodities trading, made
clear that the only proper test for determining whether a patent
method claim recites patent-eligible subject matter is the Supreme
Court's "machine-or-transformation test." The
"machine-or-transformation" test requires that, in order
to be patent-eligible (or valid for an issued patent), a method
claim must either:
