Questions Surrounding a Shift to an “Abstract Idea” Test

After the Supreme Court’s recent decision in Bilski, there are yet more questions about what constitutes patent-eligible subject matter under § 101, as the focus of the analysis appears to be shifting from the machine-or-transformation test to the amorphous question of whether a claimed method is an attempt to patent an abstract idea.

In Bilski, the Supreme Court struck down the Federal Circuit’s ruling that a method claim must satisfy the machine-or-transformation test in order to be patentable under § 101. Instead, the Court advised that while the machine-or-transformation test “is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101,” the “machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible ‘process.’”1 The Court stressed that its existing precedents establish “broad patent-eligibility principles” with the only exceptions being “laws of nature, physical phenomena, and abstract ideas.”2

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