In re: Bilski: Clarification of the 35 U.S.C. 101 Standard
The US Court of Appeals for the Federal Circuit ("CAFC") has gone and done it now. They have finally given some guidance on business method and software patent claims, and it's about time they did, too.
An en banc panel of the Federal Circuit on 30 October 2008 clarified the standards applicable in determining whether a claimed method constitutes a statutory "process" under 35 USC § 101. This is a long-awaited clarification, and is welcomed by at least my part of the patent community.
The seminal case for the patentability of business methods is State Street Bank v. Signature Financial Group. That's where we start.
The US Supreme Court has held that "...the meaning of "process" as used in § 101 is narrower than its ordinary meaning. ... Specifically, the Court has held that a claim is not a patent-eligible "process" if it claims "laws of nature, natural phenomena, [or] abstract ideas." They have also held, however, that "while a claim drawn to a fundamental principle is unpatentable, "an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection." The Court thus distinguished between claims that "seek to pre-empt the use of" a fundamental principle, on the one hand, and claims that seek only to foreclose others from using a particular "application" of that fundamental principle, on the other.
The question before the CAFC in Bilski is a question that causes the judges to ask just how one is supposed to determine whether a given claim would pre-empt all uses of a particular principle. As it turns out, the US Supreme Court has provided a test: "A claimed process is surely patent-eligible 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." The court believed that "A claimed process involving a fundamental principle that uses a particular machine or apparatus would not pre-empt uses of the principle that do not also use the specified machine or apparatus in the manner claimed. And a claimed process that transforms a particular article to a specified different state or thing by applying a fundamental principle would not pre-empt the use of the principle to transform any other article, to transform the same article but in a manner not covered by the claim, or to do anything other than transform the specified article." The CAFC "reaffirm[s] that the machine-or-transformation test, properly applied, is the governing test for determining patent eligibility of a process under § 101. Note, though, that whether a claimed process is novel or non-obvious is irrelevant to the § 101 analysis. These considerations are governed by §§ 102 and 103 and present different hurdles for the claims to overcome.
Another test for 101 patentability, the Freeman-Walter-Abele test "... in its final form, had two steps: (1) determining whether the claim recites an "algorithm" within the meaning of Benson, then (2) determining whether that algorithm is "applied in any manner to physical elements or process steps." The CAFC in Bilski concludes that the Freeman-Walter-Abele test is "...inadequate. Indeed, we have already recognized that a claim failing that test may nonetheless be patent-eligible." Rather, they hold that the machine-or-transformation test is the applicable test for patent-eligible subject matter.
The CAFC also revists the "useful, concrete, and tangible result" language associated with State Street. The Supreme Court explains that "certain types of mathematical subject matter, standing alone, represent nothing more than abstract ideas until reduced to some type of practical application." They hold that while looking for "a useful, concrete and tangible result" may in many instances provide useful indications of whether a claim is drawn to a fundamental principle or a practical application of such a principle, that inquiry is insufficient to determine whether a claim is patent-eligible under § 101.
Nancy
Delain Law Office, PLLC
THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.
An en banc panel of the Federal Circuit on 30 October 2008 clarified the standards applicable in determining whether a claimed method constitutes a statutory "process" under 35 USC § 101. This is a long-awaited clarification, and is welcomed by at least my part of the patent community.
The seminal case for the patentability of business methods is State Street Bank v. Signature Financial Group. That's where we start.
The US Supreme Court has held that "...the meaning of "process" as used in § 101 is narrower than its ordinary meaning. ... Specifically, the Court has held that a claim is not a patent-eligible "process" if it claims "laws of nature, natural phenomena, [or] abstract ideas." They have also held, however, that "while a claim drawn to a fundamental principle is unpatentable, "an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection." The Court thus distinguished between claims that "seek to pre-empt the use of" a fundamental principle, on the one hand, and claims that seek only to foreclose others from using a particular "application" of that fundamental principle, on the other.
The question before the CAFC in Bilski is a question that causes the judges to ask just how one is supposed to determine whether a given claim would pre-empt all uses of a particular principle. As it turns out, the US Supreme Court has provided a test: "A claimed process is surely patent-eligible 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." The court believed that "A claimed process involving a fundamental principle that uses a particular machine or apparatus would not pre-empt uses of the principle that do not also use the specified machine or apparatus in the manner claimed. And a claimed process that transforms a particular article to a specified different state or thing by applying a fundamental principle would not pre-empt the use of the principle to transform any other article, to transform the same article but in a manner not covered by the claim, or to do anything other than transform the specified article." The CAFC "reaffirm[s] that the machine-or-transformation test, properly applied, is the governing test for determining patent eligibility of a process under § 101. Note, though, that whether a claimed process is novel or non-obvious is irrelevant to the § 101 analysis. These considerations are governed by §§ 102 and 103 and present different hurdles for the claims to overcome.
Another test for 101 patentability, the Freeman-Walter-Abele test "... in its final form, had two steps: (1) determining whether the claim recites an "algorithm" within the meaning of Benson, then (2) determining whether that algorithm is "applied in any manner to physical elements or process steps." The CAFC in Bilski concludes that the Freeman-Walter-Abele test is "...inadequate. Indeed, we have already recognized that a claim failing that test may nonetheless be patent-eligible." Rather, they hold that the machine-or-transformation test is the applicable test for patent-eligible subject matter.
The CAFC also revists the "useful, concrete, and tangible result" language associated with State Street. The Supreme Court explains that "certain types of mathematical subject matter, standing alone, represent nothing more than abstract ideas until reduced to some type of practical application." They hold that while looking for "a useful, concrete and tangible result" may in many instances provide useful indications of whether a claim is drawn to a fundamental principle or a practical application of such a principle, that inquiry is insufficient to determine whether a claim is patent-eligible under § 101.
Nancy
Delain Law Office, PLLC
THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.
posted by Nancy Delain at
3:29 PM
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