On June 1, 2009, the U.S. Supreme Court granted a petition for a writ of certiorari in the case of In re Bilski (en banc), to determine if the Court of Appeals for the Federal Circuit was correct when it held that the machine-or-transformation test outlined by the Supreme Court in 1981 (Diamond v. Diehr) is the proper test of patentability for a process. As we reported in Expect Focus (Vol. I Winter 2009, p. 13) and in a January 29, 2009 client alert, the U.S. Court of Appeals for the Federal Circuit stated that a process tied to a particular machine or transforming an article will generally result in a concrete and tangible result, but the useful, concrete and tangible test is insufficient to determine whether a process is patent-eligible under 35 U.S.C. § 101 and that test was never intended to replace the Supreme Court’s machine-or-transformation test. Under the machine-or-transformation test, a process is patentable if it is tied to a particular machine or apparatus or if it transforms a particular article into a different state or thing.

The petition presents two issues:

  • Whether a process must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing to be eligible for patent protection; and
  • Whether the machine-or-transformation test for patent eligibility contradicts Congressional intent that business methods/ processes are entitled to patent protection.

The Supreme Court should issue its decision in 2010.