In
United States patent law
Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited ...
, the machine-or-transformation test is a test of
patent eligibility under which a
claim to a process qualifies for consideration if it (1) is implemented by a particular machine in a non-conventional and non-trivial manner or (2) transforms an article from one state to another.
[Stefania Fusco]
"Is In re Bilski a Deja Vu?"
''2009 Stan. Tech. L. Rev.'' P1
The test was first articulated under its present form in the government's brief in ''
Gottschalk v. Benson
''Gottschalk v. Benson'', 409 U.S. 63 (1972), was a Supreme Court of the United States, United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because "the pate ...
''.
In its reply brief on the merits in that case, the government said, "we submit that the cases follow such a rule—implicitly or explicitly—and that they cannot be rationalized otherwise." The court declined to adopt the proposed rule as categorical and as an exclusive test. It opined that future cases might present fact patterns calling for a different rule from that applicable to past cases, and therefore the machine-or-transformation test was just a "clue" to eligibility for a patent.
The test has been recently articulated in ''
Bilski'', but dates back to the nineteenth century. The test is articulated also in the
patent-eligibility trilogy
Patentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent protection. The laws or patent practices of many countries provide that certain subject-matter is excluded from patentability, even if the inv ...
—''
Gottschalk v. Benson
''Gottschalk v. Benson'', 409 U.S. 63 (1972), was a Supreme Court of the United States, United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because "the pate ...
'',
[409 U.S. 63 (1972).] ''
Parker v. Flook'',
[437 U.S. 584 (1978).] and ''
Diamond v. Diehr
''Diamond v. Diehr'', 450 U.S. 175 (1981), was a United States Supreme Court decision which held that controlling the execution of a physical process, by running a computer program did not preclude patentability of the invention as a whole. The hi ...
''.
[450 U.S. 175 (1981).] In the wake of the Supreme Court's opinion in ''
Bilski v. Kappos'', rejecting machine-or-transformation as the sole test of patent eligibility, and confirming that it is only a "useful clue," it is now clear that this test is only a way to measure whether the patent claim in issue preempts substantially all applications of the underlying idea or principle on which a patent is based—such preemption being a far more basic and general test of patent eligibility or ineligibility.
Supreme Court has held that this is not the only test
The Supreme Court has held that the machine-or-transformation test is not the sole test for the patent-eligibility of processes. The
certiorari
In law, ''certiorari'' is a court process to seek judicial review of a decision of a lower court or government agency. ''Certiorari'' comes from the name of an English prerogative writ, issued by a superior court to direct that the record of ...
petition in ''Bilski'' challenged that proposition. and the Supreme Court's ''Bilski'' opinion expressly rejected the Federal Circuit's declaration that it was the exclusive test to apply; despite a dissent on the proper rationale, the court was unanimous on this point.
In ''
Gottschalk v. Benson
''Gottschalk v. Benson'', 409 U.S. 63 (1972), was a Supreme Court of the United States, United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because "the pate ...
'', the court expressly reserved the point and declined to adopt the test as exclusive, stating:
It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a "different state or thing." We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents.
The government had made an argument in its brief in ''Benson'' that the Court should so hold and that it was impossible to rationalize the case law any other way. The Court, in its ruling, refused or failed to agree with that argument.
Outstanding issues
The ''Benson'' and ''Bilski'' opinions left important details of the machine-or-transformation test unexplained.
[ The details include what kind of transformation is sufficient to confer patent-eligibility and what are the characteristics of a "particular machine" that confers patent-eligibility.
]
Transformation
Transformation of an article from one thing or state to another is said to be a clue to patent eligibility. Thus, in ''Benson'', the court stated that "Transformation and reduction of an article `to a different state or thing' is the clue to the patentability of a process claim...." A hundred years earlier, the Court had said, "A process is ... an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing."
What is an article?
The ''Benson'' opinion indicated that the article had to be a physical object, such as a lump of rubber (to be transformed from raw to cured state), a piece of leather (to be transformed from untanned skin to tanned leather), or a pile of flour (to be transformed from coarse to superfine particles). The Federal Circuit's ''In re Schrader'' opinion, however, indicated that the article could be an electronic signal representative of a physical parameter, such as an EKG ("electrocardiograph signals representative of human cardiac activity ") or seismogram ("seismic reflection signals representative of discontinuities below the earth's surface") signal. Thus, the ''Schrader'' opinion chided the Supreme Court for speaking of physical "articles" rather than "subject matter," and thus only "imperfectly" reflecting the relevant legal principle. The ''Bilski'' court appears to adhere to the ''Schrader'' formulation, rather than that of ''Benson'', so that it seems to consider a signal transformation patent-eligible when the signal is representative of certain types of physical actions. But a transformation of signals representative of monetary or legal relations does not qualify, given the affirmance of the PTO's rejection of Bilski's claim and perhaps the ''Bilski'' court's treatment of ''State Street Bank'', as well.
How much of a transformation is needed?
Judge Rader asked in his ''Bilski'' dissent, "What form or amount of 'transformation' suffices?" The court did not answer his question. It may be that a "substantial" physical or chemical change of properties that is material to the objectives of the invention is required, but this is still to be resolved.
A "particular machine"
''Benson'' and ''Bilski'' speak about the process being tied to "a particular machine" while ''Flook'' says that the mechanical implementation of a natural principle must be "inventive":
Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application.
In ''Flook'' the implementation was conceded to be conventional and no departure from the prior art. Therefore, the principle with or plus a conventional implementation was patent-ineligible. The ''Flook'' Court also cited and relied on the same principle as being illustrated in ''Funk Brothers Seed Co. v. Kalo Inoculant Co.,'' in which the natural principle was implemented in a manner so trivial on its face that the patent on the implementing article of manufacture
In United States patent law, an article of manufacture (also termed a manufacture) is one of the four principal categories of things that may be patented. The other three are a process (also termed a method), a machine, and a composition of matte ...
was tantamount to a patent on the natural principle.
This aspect of the machine-or-transformation test remains to some extent an uncertain and controversial issue. For a time it was asserted that it remains "unclear whether tying a process to a general purpose computer is sufficient to pass the machine-or-transformation test."[ But in 2014 the Supreme Court expressly held in the '' Alice'' case that simply adding to a claim "do it with a computer" could not make for patent eligibility. The ''Alice'' case and its progeny also cast doubt on the assertion that use of the "]programmed computer claim
This is a list of special types of claims that may be found in a patent or patent application. For explanations about independent and dependent claims and about the different categories of claims, i.e. product or apparatus claims (claims referrin ...
format" overcomes the patent-eligibility
Patentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent protection. The laws or patent practices of many countries provide that certain subject-matter is excluded from patentability, even if the inv ...
problem. The Federal Circuit's ''Bilski'' opinion explicitly left the question unresolved. In the opening words of the ''Benson'' opinion, however, this statement occurs:
Respondents filed in the patent office an application for an invention that was described as being related "to the processing of data by program and more particularly to the programmed conversion of numerical information" in general purpose digital computers. . . . The claims were not limited to any particular art or technology, to any particular apparatus or machinery, or to any particular end use. They purported to cover any use of the claimed method in a general purpose digital computer of any type.
Arguably, this language disposes of the issue. Some pre- and post-''Bilski'' decisions of the PTO appellate board (BPAI) take the position that a programmed general-purpose digital computer is not a "particular machine," and that corresponding ''Beauregard'' claims to an encoded medium are equally nonstatutory.
In '' CyberSource Corp. v. Retail Decisions, Inc.'', a California federal district court held that limitation of a process to implementation "over the Internet" does not satisfy the machine-or-transformation test. First, the Internet is not a "particular machine." The Internet is an intangible abstraction. Second, the limitation to a particular technological environment is a mere field-of-use limitation, which does not suffice under sec. 101. Third, the use of the Internet does not impose meaningful limits on the preemptive scope of the claims. The same court held that a "''Beauregard''" claim directed to the instructions for performing a method that does not pass the machine-or-transformation test will also fail to pass that test. The court pointed out that the PTO appellate board had similarly interpreted ''Bilski''. The subsequent ''Alice'' decision appears to have substantially resolved these questions in favor of a determination of patent ineligibility.
An imperfectly resolved issue is whether the machine-or-transformation test is narrowly misnamed, since the relevant case law includes comparable implementations of natural-principle processes with other types of physical objects besides a machine
A machine is a physical system using Power (physics), power to apply Force, forces and control Motion, movement to perform an action. The term is commonly applied to artificial devices, such as those employing engines or motors, but also to na ...
. In ''Funk'', on which ''Flook'' relied, the implementation of the natural principle was with a package — an article of manufacture
In United States patent law, an article of manufacture (also termed a manufacture) is one of the four principal categories of things that may be patented. The other three are a process (also termed a method), a machine, and a composition of matte ...
. There is no principled reason why a natural-principle process must be implemented physically with a machine
A machine is a physical system using Power (physics), power to apply Force, forces and control Motion, movement to perform an action. The term is commonly applied to artificial devices, such as those employing engines or motors, but also to na ...
and not with an article of manufacture
In United States patent law, an article of manufacture (also termed a manufacture) is one of the four principal categories of things that may be patented. The other three are a process (also termed a method), a machine, and a composition of matte ...
or composition of matter
In United States patent law, a composition of matter is one of the four principal categories of things that may be patented. The other three are a process (also termed a method), a machine, and an article of manufacture. In United States patent l ...
. The test explained in ''Bilski'' thus should be regarded as a ''physical object or transformation'' test or a device-or-transformation test.
Is satisfying the test a necessary condition for patent-eligibility, a sufficient condition, both or neither?
It is debatable whether the decision of the Federal Circuit in ''In re Bilski'' made the machine-or-transformation test a necessary condition for patent-eligibility, a sufficient condition, or both a necessary and sufficient condition. The ''Bilski'' opinion ''seems'' to declare a rule that a claimed invention is patent-eligible ''if and only if'' it satisfies the machine-or-transformation test. Both prongs of if-and-only-if have been challenged, and in its opinion on appellate review of the Federal Circuit's opinion the Supreme Court held that the machine-or-transformation test was only a helpful clue and not in itself dispositive.
A commentator asserted that an example illustrating the proposition that satisfying the machine-or-transformation test is not a sufficient condition for patent-eligibility occurs in U.S. Pat. No. 6,701,872. This patent covers a method and apparatus (machine) for entertaining a cat by using a moving laser beam (relatively high technology). The method is implemented with a "particular machine"—"a rotating laser source mounted directly on a shaft driven directly by a motor mounted on a portable pedestal" (method claim 14). But it is debatable whether entertaining a cat may be considered a useful Art, and some may argue that this "discovery" is not the kind of discovery that the Patent Clause contemplates.
Attempts have been made, also, to describe processes that fail to satisfy the machine-or-transformation test but nonetheless seem clearly to be patent-eligible.
A method of removing dirt from a soiled garment, comprising:
placing a soiled garment in flowing water; and
shaking said garment for at least five minutes.
The question has been raised, also, whether beating the garment with a stick constitutes use of a "particular machine." That question is illustrated by the following hypothetical claim that is a variation on the preceding example:
A method of removing dirt from a soiled garment, comprising:
submerging a soiled garment in water; and
beating said garment for at least five minutes with a stick.
The point of this type of analysis is that the machine-or-transformation test does not work for all cases. There are some unusual outliers that satisfy the test but are patent-ineligible and some that do not satisfy the test but are patent-eligible. The Supreme Court's subsequent analyses in the ''Bilski'' and ''Alice'' cases confirms the inability of the machine-or-transformation test to cover all possible cases, as the foregoing examples suggest. Therefore, these "thought experiment
A thought experiment is a hypothetical situation in which a hypothesis, theory, or principle is laid out for the purpose of thinking through its consequences.
History
The ancient Greek ''deiknymi'' (), or thought experiment, "was the most anci ...
" patent claims show that, while the machine-or-transformation test is a valuable and useful clue, as the ''Alice'' case states, and it may well cover most practical cases, it is neither a necessary nor sufficient test of patent eligibility.
The "corollaries"
''Bilski'' points out, and the PTO recently emphasized in a memorandum to its Examining Staff, that there are two "corollaries" to the machine-or-transformation test. First, a mere field-of-use limitation is generally insufficient to make an otherwise ineligible method claim patent-eligible. The PTO Guidance Memo explains that " is means the machine or transformation must impose meaningful limits on the method claim's scope or it
Or or OR may refer to:
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to pass the test." What makes a limitation meaningful is unstated, but perhaps that concept can be defined in terms of whether the limitation places only an insubstantial limitation on claim scope or preemptiveness.
The second corollary is that insignificant extra-solution activity will not transform a patent ineligible principle into a patentable process. The PTO Guidance Memo explains that " is means reciting a specific machine or a particular transformation of a specific article in an insignificant step, such as data gathering or outputting, is not sufficient to pass the test." It is unclear whether this concept would apply to such acts as gathering temperature data from thermocouples inside a mold or opening the lid of a mold upon the completion of a curing process.
It is reasonable to assume that whether a given step is ''insignificant'' or ''central to'' a claimed process will be a controversial issue in post-''Bilski'' cases testing the meaning of the machine-or-transformation test.
Possible interaction between the machine-or-transformation test and the exhausted combination doctrine
It has not yet been explored in litigation whether claiming a computer-related advance as an exhausted combination The exhausted combination doctrine, also referred to as the doctrine of the ''Lincoln Engineering'' case, is the doctrine of U.S. patent law that when an inventor invents a new, unobvious device and seeks to patent not merely the new device but al ...
provides a way to prevent the claimed advance from being classified as nonstatutory subject matter
Patentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent protection. The laws or patent practices of many countries provide that certain subject-matter is excluded from patentability, even if the inv ...
. A so-called exhausted combination claim is one to a device in which a novel group of elements cooperates in a conventional manner with some old elements—for example, a new kind of motor and an old disk drive. Placing a process that fails the machine-or-transformation test in a machine environment overcomes the absence of implementation by a specific machine, as required by ''In re Bilski'' and the Supreme Court decisions on which it is based.
The format of the processes claimed in ''Diamond v. Diehr
''Diamond v. Diehr'', 450 U.S. 175 (1981), was a United States Supreme Court decision which held that controlling the execution of a physical process, by running a computer program did not preclude patentability of the invention as a whole. The hi ...
'', '' Parker v. Flook'', and ''Gottschalk v. Benson
''Gottschalk v. Benson'', 409 U.S. 63 (1972), was a Supreme Court of the United States, United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because "the pate ...
'' illustrate the concept and its practical application. In ''Diehr'', the claim was to "a method of operating a rubber-molding press" using the Arrhenius equation
In physical chemistry, the Arrhenius equation is a formula for the temperature dependence of reaction rates. The equation was proposed by Svante Arrhenius in 1889, based on the work of Dutch chemist Jacobus Henricus van 't Hoff who had noted in 18 ...
, and the claim contained at least minimal references to the mold press and other apparatus. The Court held the claim patent-eligible. In ''Flook'', the claim was to a "method for updating the value of at least one alarm limit," where an "'alarm limit' was a number." The claim said nothing about a chemical reaction vessel or even temperature measuring devices. The Court held the claim patent-ineligible. In ''Benson'', the claim was to "a data processing method for converting binary coded decimal number representations into binary number representations." One claim mentioned a reentrant shift register and the other claim mentioned no apparatus at all. The Court held both claims patent-ineligible, however, on the ground that the computer-equipment limitation was too trivial to avoid preempting the idea, since the method could not feasibly be used except with a computer.
In ''Flook'', the claim could have instead been to "a method of operating a hydrocracking plant wherein hydrocarbon feedstock is fed into a chemical reactor, heat is applied, etc." The claim, although to an exhausted combination,[The Court's opinion states that it was conceded that the process was known and conventional except for its use of the algorithm.] would have required apparatus as did that in the ''Diehr'' case. Similarly, the claim in ''Benson'' could have been to a method of operating a telephone switch box or perhaps even a method of providing binary-coded-decimal numerical signals to a binary-coded operating device. Again, by providing a seemingly nontrivial mechanical environment, even though it was just an exhausted combination, the claims drafter might have avoided the holding of nonstatutory subject matter (patent-ineligibility). It is thus possible that careful claims drafting techniques will succeed in elevating form over substance, to avoid the impact of the machine-or-transformation test.
The subsequent unanimous Supreme Court decisions in the ''Mayo Mayo often refers to:
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Mayo may also refer to:
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'' and '' Alice'' cases, by reaffirming the doctrine of the '' Flook'' case, cast doubt on the likelihood of success of the drafting techniques described above. That doctrine is that a claim to the implementation of a principle that is patent ineligible in itself must be inventive rather than routine and conventional, in order to make that claim patent eligible.
References
{{reflist, 2
United States patent law
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