On June 1, 2009, the U.S. Supreme Court granted certiorari of the Federal Circuit’s decision in In re Bilski. The Petition for Writ of Certiorari presented two questions:
Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. §101, despite this Court's precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”
Whether the Federal Circuit's “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. §273.
On October 30, 2008 in In re Bilski, the en banc Federal Circuit held that the exclusive test for whether a process claim is directed to statutory subject matter under 35 U.S.C. § 101 is the “machine-or-transformation” test. The effect of this decision has been to make business method patents virtually impossible to obtain and to make patents directed to software and computer-implemented processes more difficult to obtain.
The en banc Federal Circuit’s decision is predicated on its interpretation that Supreme Court precedent, including Gottschalk v. Benson and Diamond v. Diehr, recognizes no other test for determining whether a process claim is directed to statutory subject matter. The Supreme Court will now decide whether the Federal Circuit’s interpretation is correct.