STLR Publishes New Article Addressing In re Bilski and Invention Incentives

STLR is pleased to announce the publication of the fall issue of STLR Volume XI. The article entitled Predictability and Patentable Processes: The Federal Circuit’s In re Bilski Decision and Its Effect on the Incentive to Invent discusses the Federal Circuit’s most recent en banc decision addressing the scope of patentable subject matter under § 101.  In Bilski, the court reformulated the semi-positive Machine or Transformation test articulated in Supreme Court precedent into a positive statement on the scope of patentable processes. Under the Machine or Transformation test articulated by the Federal Circuit, a process may be patentable subject matter if: (1) it utilizes a particular machine or apparatus; or (2) it transforms an object into a different state or thing. The Supreme Court’s original formulation of a Machine or Transformation test left open the possibility that processes that did not meet its criteria may still be patentable subject matter. The Federal Circuit’s reformulation of the test forecloses this possibility; if a process fails its Machine or Transformation test, it is not patentable subject matter under § 101.

In this article, Mr. Schuster argues that this new test incentivizes innovation, a primary goal of patent law, by increasing the predictability of § 101 process determinations. The PTO and courts are well suited to apply this test, which establishes a more straightforward inquiry than previous § 101 tests. The attendant increase in predictability from the application of this clearer rule will encourage investment in research and development because inventors and investors will be better able to make determinations about future patentability and associated profitability of process inventions.

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