North Dakota Law Review
Article Title
First Page
641
Last Page
666
Abstract
Bilski v. Kappos, 130 S. Ct. 3218 (2010)In Bilski v. Kappos, the United States Supreme Court clarified the threshold test of patent eligibility under 35 U.S.C. § 101, holding the machine-or-transformation test was not the sole test to determine whether a process invention was eligible for patent. The machine-or-transformation test is an important and useful clue in determining whether a process invention is patent eligible, but should not be used as a bright-line test. The Court interpreted the statutory language of “process” with its ordinary, contemporary, and common meaning, which did not require a tie to a machine or transformation of an article, and the Court thus concluded the machine-or-transformation test could not be the sole test of patent eligibility for processes. The Court further held 35 U.S.C. § 101 similarly did not preclude business methods from being patent eligible as processes. Because “method” may include methods of doing business—as there is no ordinary, contemporary, and common meaning of “method” that excludes business methods—and federal law explicitly contemplates the existence of some business method patents in a defense to patent infringement within 35 U.S.C. § 273(b)(1), business methods are not precluded under § 101 from patent eligibility. Nonetheless, the Court concluded the claimed invention was not patent eligible because it was an abstract idea. Bilski attempted to bring clarity to the determination of patent eligibility for processes, but the decision may have made the patent eligibility determination more nebulous.
Recommended Citation
Binstock, Rebecca L.
(2010)
"Intellectual Property—Patents: The United States Supreme Court Clarifies the Test for Patent Eligibility of Processes,"
North Dakota Law Review: Vol. 86:
No.
3, Article 7.
Available at:
https://commons.und.edu/ndlr/vol86/iss3/7