Patent Alert: Federal Circuit en banc Clarifies the Test for Determining When Processes are Patentable

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In a long-awaited decision, on October 30, 2008, the Federal Circuit en banc decided In re Bilski, clarifying the test for determining whether a process patent claim qualifies as patentable subject matter under Section 101 of the U.S. Patent Act. Although Bilski brought three separate, spirited dissents, the nine prevailing judges' opinion derives its test from Supreme Court decisions separating abstract ideas and principles from patentable subject matter. In particular, Bilski states the "definitive test" for determining whether a process is narrowly tailored enough not to pre-empt a principle itself in this context is if it (1) is tied to a particular machine or apparatus or (2) it transforms a particular article into a different state or thing. While some amici had asked the Federal Circuit to adopt broad exclusions over "business methods" or software, the court declined those invitations. In affirming the rejection of Bilski's patent claims, the Federal Circuit provides one example of an unpatentable process under this test, but leaves uncertainty about how existing patents and new patent applications will fare under case-by-case application of the Bilski court's test.

Please see full alert for more information.

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