A number of recent decisions, mostly related to patent applications for "business methods," have held that specific method/process claims are not patentable since they do not involve patentable subject matter, that is, subject matter that is considered patentable under the Patent Statute. In a case, In re Bilski, decided on October 30, 2008 by the entire Court of Appeals for the Federal Circuit (en banc decision), the Court clarified the standard for whether a claim method/process constitutes a method/process is patentable under the Patent Statute.

The Court, based on a 1972 Supreme Court decision (Gottschalk v. Benson, referred to as Benson), stated that a claim method/process is eligible for patent protection under the patent statute if: (1) the method/process is tied to a particular machine or apparatus, or (2) the method/process results in a physical transformation of a particular article from one state into a different state. Although the Court acknowledged that, in present-day technology the raw materials or articles can be electronic data, the Court did not expand or elucidate what constitutes a transformation that would make a method/process patent eligible, but instead referenced their past opinions as guidance. The Court also left for future cases the definition of what constitutes being tied to a particular machine or apparatus.

This decision has significant impact on whether a method/process claim for software, business methods or bioinformatics is patentable. We have experienced an increase in claim rejections, for method claims, based on the claim not being related to matter that is eligible for patent protection under the patent statute. We have been relying on the Benson test to guide us on how to amend the claims and argue that patentability, an approach that was affirmed by the above described Court decision. We can now use the Bilski decision to obtain patent protection for your intellectual property or to obtain successful resolution of your patent disputes.