Amster Rothstein and Ebenstein, LLP - Intellectual Property Law

ARE Patent Law Alert:
Bilski: The Court Announces Machine or Transformation Test as “Governing” Test

October 30, 2008
Author(s): Charles R. Macedo

The U.S. Court of Appeals for the Federal Circuit today issued its much awaited decision in In re Bilski, No. 2007-1130 (Fed. Cir. Oct. 30, 2008) (en banc). The majority opinion, authored by Chief Judge Michel and joined in by seven of the judges on the Court, seeks to return patent-eligible subject matter jurisprudence to the fundamental principles enunciated by the Supreme Court in its prior decisions.

The majority opinion relies upon the so-called “machine-or-transformation test” set forth by the Supreme Court in its Benson, Flook and Diehr decisions as the as the “governing” test in this area. Under the majority’s test, a patenteligible process must either be tied to a particular machine, or transforms an article.

The majority rejected existing alternative tests as short cuts to a full analysis under the machine-or-transformation test, including the previously-rejected “Freeman-Walter-Abele” and “technological arts” tests, and the previously relied upon “useful, concrete and tangible results” test.

The majority took this opportunity to reformulate its prior jurisprudence in this subject area to bring it into what it viewed was in conformity with its current reading of the binding Supreme Court precedent.

For an overview of the “machine-or-transformation test” as adopted by the majority opinion and a brief summary of the analyses presented in the dissenting and concurring opinions, please see our Guest Column in IP Law 360, which will be available shortly at our firm website. See Charles R. Macedo and David Boag, The ‘Machine-Or-Transformation Test’ For Processes, IP Law 360, Portfolio Media, New York (October 30, 2008) (available at

Please feel free to contact us to learn more about this decision and its impact on U.S. Patent law.

View all ARELaw Alerts


Upcoming Events

View all Events >


Never miss another publication. Our RSS feed (what is RSS?) will inform you when new articles have been posted.

Amster Rothstein & Ebentein RSS Feed Subscribe now!

Linkedin AREnet Access
©2007-2023 Amster Rothstein & Ebenstein LLP.    All rights reserved. | Disclaimer