In Re Bilski

On 30 October 2008, the US Court of Appeals for the Federal Circuit (CAFC) issued a decision in the In re Bilski patent case. The patent application in question had claims directed to a process for managing risk in commodity trading. These claims were initially rejected by the US Patent Office examiner and then the Board of Patent Appeals and Interferences as relating to non-statutory subject matter. Upon appeal, the Federal court looked at what the appropriate test should be for determining when a process claim is or is not appropriate subject matter for patent protection. Rejecting previously used tests, the majority opinion provided a new "machine-or-transformation" test. Under this test, a claimed process is statutory subject matter (and therefore potentially patentable) if (1) it is tied to a particular machine or apparatus or (2) it involves the transformation of an article into a different state or thing. There remains a degree of uncertainty about the scope of this test - for example, do only certain kinds of electronic signals or data fall within the meaning of "articles" that may be transformed, and might a general purpose computer qualify as a "particular machine"? It is also unclear how the US Patent and Trademark Office will apply this test in practice when examining patent applications. What does appear clear though is that the range of patentable subject-matter has been narrowed somewhat - the extent of the narrowing will only become apparent over time.