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On Shaky Ground: The (Near) Future of Patents After Bilski
Bernard Bilski did not intend to be a poster child for business method inventions. He filed his patent application more than a year before the Federal Circuit decided State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), the decision that inspired a blizzard of business method patent applications. Bilski claimed a method of hedging commodity transactions by performing “transactions” between commodity providers, commodity consumers, and market participants who have counter-risk positions to the consumers. Bilski's patent claims are directed to one class of “business methods,” those pertaining to trading methods. The U.S. Patent and Trademark Office (“USPTO”) rejected Bilski's claims, as part of a larger overall policy shift to limit the scope of patentable subject matter. It was therefore no surprise that Bilski appealed to the Federal Circuit.
In re Bilski, ___ F.3d ___ (Fed. Cir. 2008), offered the Federal Circuit an opportunity to answer important questions about the scope of patentable subject matter. Superficially, the court did just that, setting forth a so-called “machine-or-transformation” rule as the “definitive test” for deciding whether a “process” claim is patentable subject matter under 35 U.S.C. '101. The court held that a process claim is patent-eligible if either: 1) it is tied to a particular machine or apparatus, or 2) it transforms a particular article into a different state or thing.
Applying this test, the court held that Bilski's claim was not patentable subject matter because it did not transform “any article to a different state or thing.” The court found that the claim “encompasses the exchange of only options, which are simply legal rights to purchase some commodity,” and that “transactions involving the exchange of these legal rights do not involve the transformation of any physical object or substance, or an electronic signal representative of any physical object or substance.” Because Bilski conceded that the claims were not tied to any particular machine, they failed the court's “machine or transformation” test.
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