The intermediate appellate court for patents (Court of Appeals for the Federal Circuit) sitting en banc (all together, rather than a panel of three) held in In re Bilski (October 30, 2008) that process/method claims must be claimed either as physically transforming something into something else (e.g., an industrial or manufacturing process) or as a method tied to a machine. In doing so, they threw out their own test created ten years ago in State Street Bank & Trust v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), where they held that for a process to be a statutory process (i.e., one of the requirements for patentability), one must look to the result of the process and so the process must produce a useful, tangible, and concrete result. Tying a method to a machine is consistent with the Federal Circuit’s previous holding in In re Comisky, 499 F.3d 1365 (Fed. Cir. 2007). During this summer, the Board of Patent Appeals and Interferences (BPAI), in two cases appealed in the course of patent prosecution (Ex Parte Langemyr (May 2008) and Ex Parte Wasynczuk (June 2008)), has in essence required a tie of process to machine in a claim in order for a business-related patent claim to be eligible for examination as to its patentability in light of the state of the art.
The Federal Circuit in Bilski did not overturn State Street per se (see the dissent by Circuit Judge Mayer), nor did it invalidate what are called business method claims. Again, Bilski changes the first test (i.e., the statutory subject matter test) for a patentable method of business (and all other software-implemented inventions) from requiring a useful, tangible, and concrete result to requiring the steps of the method claim be tied to a machine doing/executing the process.
The concern patent attorneys have is the degree to which the claim must tie the process to the machine and/or what may be claimed as representative of the elements being transformed in the claimed solutions that define the scope of the patent claim. Particularly as to the tying of method to a machine, have no guidance from the Federal Circuit’s opinion in Bilski on this and so we look to the BPAI cases (like Langemyr and Wasynczuk) for suggestions. (BPAI cases may be appealed from the Patent Office to the Federal Circuit.)
