Cruel Hand of Bilski: Culminating the Shortsighted Crusade for Marginalization of the 'Process' Patent

Abstract

Section 101 of the United States Patent Code defines the types of inventions or discoveries for which patent protection may be sought as new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof . In recent years, few issues in patent law have caused more controversy than the debate over how to properly interpret the scope of the “process” category of patentable subject matter. Following the Federal Circuit's 1998 decision in State Street Bank - in which the broad useful, concrete and tangible result test was adopted - the number of patents on software and business methods soared. However, in October of 2008, the Federal Circuit reversed course and took the law in a drastically new direction with In re Bilski, wherein the Court overruled State Street and adopted the so-called test, holding that a process will only constitute patentable subject matter if it (1) is tied to a particular machine, or (2) transforms a particular object or substance. This Article argues that, because the machine-or-transformation test is inconsistent with Section 101 and is contrary to Congressional intent, Bilski should be overruled. Part I analyzes the history of jurisprudence regarding the process as a category of patentable subject matter. Part II argues that Bilski was wrongly decided, and that the progression of the law in this area has been largely misguided. Part III proposes an alternative procedural and substantive framework, arguing that the procedural treatment of Section 101 as a threshold requirement should be abandoned in favor of an alternative approach that addresses patentable subject matter inquiries only after all other requirements for patentability have been established.