Wednesday, November 13, 2013

In re Bilski case brief

In re Bilski case brief summary
545 F.3d 943 (2008)

Patent applicants appealed a decision of the United States Patent and Trademark Office, Board of Patent Appeals and Interferences (Board) that sustained the rejection of all 11 claims of their U.S. Patent Application Serial No. 08/833,892 as not directed to patent-eligible subject matter under 35 U.S.C.S. § 101. The applicants sought to patent a method of hedging risk in the field of commodities trading.

The issue was whether the applicants were seeking to claim a fundamental principle (such as an abstract idea) or a mental process.


  • The court held that the machine-or-transformation test was the applicable test for patent-eligible subject matter. 
  • The court then concluded that the applicants' claim for a method of hedging risk in the field of commodities trading was not patentable because the applicants sought to claim a non-transformative process that encompassed a purely mental process of performing requisite mathematical calculations without the aid of a computer or any other device, mentally identifying those transactions that the calculations have revealed would hedge each other's risks, and performing the post-solution step of consummating those transactions. 
  • The process did not involve a machine or apparatus. 
  • The process also did not transform any article to a different state or thing. 
  • Purported transformations or manipulations of public or private legal obligations or relationships, business risks, or other such abstractions could not meet the test because they were not physical objects or substances, and they were not representative of physical objects or substances.
The appellate court affirmed the decision of the Board.

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