Supreme Court Rejects Machine or Transformation Test

June 29th, 2010

In its long-awaited opinion, the Supreme Court rejected the Court of Appeals decision in Bilski v. Kapos that method patents must be either tied to a particular machine or transform an article from one state to another.  While the so-called machine or transformation test remains an  important analytical tool for examining method patents, it cannot be used as a requirement for patent eligibility.  The Court emphasized that while the definition of “process” in the Patent Act includes business processes, they remain subject to rejection using existing patent rules including novelty, obviousness and the adequate disclosure requirement.  In fact, although the Court rejected the machine or transformation requirement, it nevertheless found Mr. Bilski’s patent claims non-statutory, suggesting that courts will continue requiring business processes to meet the current high bar for patentability.  Arguably what constitutes patentable subject matter is now less clear and defined, although the new more flexible standard should be more adaptable to advances in information technology going forward.