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Bilski Added Instability for Some, Changed IP Practice, Attorneys Say

Publication Date: 
January 28, 2011
BNA - Patent Trademark & Copyright Journal
Joyce E. Cutler

Professor Mark Lemley comments on the machine-or-transformation standard for testing patentable material. The BNA - Patent Trademark & Copyright Journal filed the following story:

The U.S. Supreme Court decision that process claims directed to an “abstract idea’’ are not patentable subject matter created instability in some areas of intellectual property law but provided some solidity in the life sciences industry, panelists at a Santa Clara University law conference said Jan. 21.

Attorneys at the Santa Clara Computer & High Technology Law Journal symposium said the impact of Bilski v. Kappos seven months after the unanimous decision extends far into IP practice.


While the Supreme Court correctly said that a machine-or-transformation test should not be the exclusive test for patentable matter, according to Stanford University law professor Mark Lemley, “they didn't give any substantial guidance as to what other sort of tests or rules one might use to figure out what was an abstract idea.’’

So the natural tendency in courts “has been to fall back on the one test that somebody has articulated which is the machine-or-transformation test,’’ said Lemley, who added that he thinks the test is “disastrous.’’

“But it's an open question, after two Federal Circuit opinions interpreting Bilski, whether we have something beyond machine-or-transformation, or whether that's really what we're going to end up using,” Lemley said.