IPPT20100628, USSC, Bilski v Kappos

Print this page 01-11-2010
IPPT20100628, USSC, Bilski v Kappos



Three exceptions to broad principles of patentability Section 101
• This Court’s precedents provide three specific exceptions to §101’s broad principles: “laws of na-ture, physical phenomena, and abstract ideas.” 

The §101 eligibility inquiry is only a threshold test. 
• Even if a claimed invention qualifies in one of the four categories, it must also satisfy “the conditions and requirements of this title,” §101(a), including novelty, see §102, non obviousness, see§103, and a full and particular description, see §112. 


The machine-or-transformation test is not the sole test for patent eligibility under §101. 
• The Court’s precedents establish that although that test may be a useful and important clue or in-vestigative tool, it is not the sole test for deciding whether an invention is a patent-eligible “process” under §101.  The Court of Appeals incorrectly con-cluded that this Court has endorsed the machine-or-transformation test as the exclusive test.


Business methods not categorically excluded from “process”
• Section 101 similarly precludes a reading of the term “process” that would categorically exclude business methods.  The term “method” within §100(b)’s “process” definition, at least as a textual matter and before other consulting other Patent Act limitations and this Court’s precedents, may include at least some methods of doing business. 


Abstract ideas are not patentable processes
• Petitioners seek to patent both the concept of hedging risk and the application of that concept to energy markets. Under Benson, Flook, and Diehr, however, these are not patentable processes but at-tempts to patent abstract ideas. 
No further definition of patentable process required
• Because petitioners’ patent application can be rejected under the Court’s precedents on the unpat-entability of abstract ideas, the Court need not define further what constitutes a patentable “proc-ess,” beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook, and Diehr.
• Nothing in today’s opinion should be read as en-dorsing the Federal Circuit’s past interpretations of §101.

IPPT20100628, USSC, Bilski v Kappos