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ARTICLE · 28 JANUARY 2009

To Be Patentable Under § 101, A Process Must Be Tied To A Machine Or Transform An Article Into A Different State Or Thing

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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In In re Bilski, No. 07-1130 (Fed. Cir. Oct. 30, 2008) (en banc), the Federal Circuit affirmed the decision of the Board, finding that the method claims in Bernard L. Bilski and Rand A. Warsaw's (collectively "Bilski") patent application were not directed to statutory subject matter under 35 U.S.C. § 10.

United StatesIntellectual Property
Erika Arner
Erika Arner
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Judges: Michel (author), Newman (dissenting), Mayer (dissenting), Lourie, Rader (dissenting), Schall, Bryson, Gajarsa, Linn, Dyk (concurring), Prost, Moore

[Appealed from Board]

In In re Bilski, No. 07-1130 (Fed. Cir. Oct. 30, 2008) (en banc), the Federal Circuit affirmed the decision of the Board, finding that the method claims in Bernard L. Bilski and Rand A. Warsaw's (collectively "Bilski") patent application were not directed to statutory subject matter under 35 U.S.C. § 101. In doing so, the Court noted that the machine-ortransformation test is the test that should be used to determine whether a process claim is drawn to statutory subject matter. The Court explained that under this test, a claimed process is patentable under § 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.

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