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Bilski: What’s at Stake, Part 3

Published onNov 23, 2009
Bilski: What’s at Stake, Part 3

This series discusses the recent appeal to the Supreme Court of In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), cert. granted, 129 S.Ct. 2735 (2009). Bilski raises the issue of what constitutes a patentable process under 35 U.S.C. § 101.

Part 3: A Brief Overview of the US Patent & Trademark Office’s Arguments

This post provides an overview of the central arguments from the USPTO’s brief to the Supreme Court. According to the USPTO, the Federal Circuit correctly adopted the mandatory machine-or-transformation test and rejected Bilski’s patent application. The USPTO highlighted three main reasons why the Federal Circuit got it right.

First, the USPTO contends that although § 101 covers a broad range of subject matter, historically, it has excluded methods that are directed to organizing human activity. Instead, § 101 protects industrial and technological processes. In addition, the Supreme Court has consistently recognized that the machine-or-transformation test is appropriate for determining whether an invention is a patentable process under § 101. See, e.g., Diamond v. Diehr, 450 U.S. 175 (1981); Cochrane v. Deener, 94 U.S. 780 (1877). Finally, the machine-or-transformation test is most appropriate because it effectively distinguishes technological methods, such as software, from non-technological methods like Bilski’s claimed invention.

Second, the USPTO argues that § 273 does not implicitly expand the categories of patent-eligible subject matter in § 101. This provision was enacted to provide an affirmative defense for businesses that had been using previously unpatentable methods. However, by enacting this provision, Congress did not intend to extend patent protection to such non-technological business methods. According to the USPTO, if Congress had intended to broadly expand the scope of patentable subject matter under § 101 by enacting § 273, Congress surely would have made this clear when it adopted § 273. Thus, Congress’s failure to do so indicates that it did not intend this result.

Therefore, the USPTO argues that the Federal Circuit correctly rejected petitioners’ claimed method of hedging risk under § 101 because it is not tied to a particular machine or apparatus, and it does not transform a particular article into a different state or thing.

Other Parts:

Part 1: Background and the Federal Circuit’s Decision

Part 2: A Brief Overview of Petitioner’s Arguments

Part 3: A Brief Overview of Respondent’s Arguments

Part 4: How the Supreme Court Should Rule

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