Summary of In re Bilski
The purpose of this blog post is to simply summarize the Bilski case and its relationship to Section 101 of the U.S. code.
Summary of the case
This case dealt with a patent application that described a method for providing a fixed bill energy contract to consumers. The invention calculated the amount a consumer would pay for a future bill based on prior bills. For further details on the application see patent application number 08/833,892. The patent examiner rejected all 11 claims on the grounds that “the invention is not implemented on a specific apparatus and merely manipulates an abstract idea and solves a purely mathematical problem without any limitation to a practical application, therefore, the invention is not directed to the technological arts.” The applicant appealed the rejection to the Board of Patent Appeals and Interferences (BPAI). The BPAI affirmed the rejection, on different grounds than the “technological arts” test. Their reasoning was that the Applicants’ claims did not involve any patent-eligible transformation. Finally the applicants appealed the rejection to the Federal Circuit, which upheld the rejection, 9-3.
U.S.C. §101
Section 101 of the U.S. Code states that whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title. The Supreme Court has held that a claim is not a patent-eligible “process” if it claims “laws of nature, natural phenomena, [or] abstract ideas.”
What are Fundamental Principles?
§101 articulate that fundamental principles (i.e., laws of nature, natural phenomena, or abstract ideas) are not patent eligible. The court stated in Funk Bros. Seed Co. v. Kalo Inoculant Co. that fundamental principles are “part of the storehouse of knowledge of all men…free to all men and reserved exclusively to none.” Furthermore, the Supreme Court held that while a claim drawn to a fundamental principle is unpatentable, “an application of a law of nature or mathematical formula to a known structure or process may be well deserving of patent protection.”
Effects of Sections 102 and 103 on Section 101
The Federal Circuit explains that although § 101 refers to “new and useful” processes, it is overall “a general statement of the type of subject matter that is eligible for patent protection subject to the conditions and requirements of this title.” Furthermore, the legislative history of § 101 suggests that Congress did not intend the “new and useful” language of § 101 to constitute an independent requirement of novelty or non-obviousness distinct from the more specific and detailed requirements of §§ 102 and 103. Basically, it suggests §§ 102 and 103 are irrelevant in regards to § 101.
Tests Used To Determine If an Invention is a Fundamental Principle or Patentable
“Machine-or-Transformation” Test
The Supreme Court enunciated a definitive test to determine whether a process claim is tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself. According to this test, a claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. This is the test used by the Supreme Court and is the general law of the land.
Freeman-Walter-Abele Test
This test has two steps: (1) determining whether the claim recites an “algorithm” within the meaning of Benson, then (2) determining whether that algorithm is “applied in any manner to physical elements or process steps.” The Court concluded that this test is inadequate. A claim failing this test may still be patent eligible.
“Useful, Concrete, and Tangible Result” Test
This test allows patents of fundamental principles if the patent produces a useful, concrete, tangible result without pre-empting other uses of the principle. Basically, the Court believed that a process tied to a particular machine, or transforming or reducing a particular article into a different state or thing, will generally produce a “concrete” and “tangible” result. The Court however, finds this test insufficient in determining whether a claim is patent eligible under §101.
“Technological Arts” Test
This test, though never articulated by the Court, states that patents should be reserved only for “technological” inventions that involve the application of science or mathematics,” thereby excluding “non-technological inventions” such as “activities whose ability to achieve their claimed goals depended solely on contract formation.” The Court articulated that the contours of such a test would be unclear because the meanings of the term “technological arts” and “technology” are both ambiguous and ever-changing.
Comiskey Test
The Court believes that there was a misunderstanding about their decision in Comiskey. It is believed that Comiskey implicitly applied a new §101 test that bars any claim reciting a mental process that lacks significant “physical steps.” The court stated in the Comiskey case, it simply recognized that the Supreme Court held that mental processes, like fundamental principles, are excluded by § 101 because “phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts… are the basic tools of scientific and technological work.”
References
Diamond v. Diehr, 450 U.S. 175, 182-184 (1981).
In re Bilski, U.S. Court of Appeals for the Federal Circuit, (2008).
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