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

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Uncertainty existed regarding the future of patent eligibility of business method patents following the Supreme Court’s decision in Bilski v. Kappos in 2010. Bilski held that the “machine-ortransformation 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 patent-eligible 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.

Since the Supreme Court’s decision, the Federal Circuit, the district courts, and the Board of Patent Appeals and Interferences (BPAI) have all applied the holding in Bilski to determine whether process claims constitute patent-eligible subject matter. A subset of these decisions focuses on the validity of process claims that do not implicate a machine or transformation, of which few claims have been found valid. This article focuses on patentability of claims that do not recite a machine or transformation and analyzes trends in the courts’ and BPAI’s decision making since Bilski v. Kappos issued.

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