MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 9, Issue 4 - Fall 2011

In This Issue:

1 - Patentability of Process Claims and Business Method Inventions with No “Machine or Transformation”

1 - From Your Office to the Patent Office: Tips on Gathering and Identifying Patentable Employee Inventions

12 - Tips on Controlling Intellectual Property Protection Costs: What Business Owners Need to Know

Excerpt from "Patentability of Process Claims and Business Method Inventions with No "Machine or Transformation"


Uncertainty existed regarding the future of patent eligibility of business method patents following the Supreme Court’s decision in Bilski v. Kappos1 in 2010. Bilski held that the “machine-or transformation test” is not the exclusive test for determining whether claims of business method patents constitute a “process” and therefore patent-eligible subject matter under 35 U.S.C. § 101. According to § 101, patent-eligible subject matter includes “any new and useful process, machine, manufacture, or composition of matter.” Additionally, the Supreme Court reiterated that the three exceptions to patenteligible subject matter are “laws of nature, physical phenomena, and abstract ideas” and applied these exceptions along with the “machineor- transformation” test to invalidate a claim related to hedging risk for being directed to an abstract idea.

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