Bilski v. Kappos, 561 U.S. 593 (2010)
The U.S. Supreme Court explains what §101 covers: the machine-or-transformation test helps, but it is not the only path to patent eligibility.
```
Table of Contents
Quick Summary
Core idea: The machine-or-transformation test is a helpful clue for §101, not the only rule. A claim that is just an abstract idea—like hedging risk—fails patent eligibility.
Issues
- Is the machine-or-transformation test the only test for §101 patent eligibility?
- Did the Federal Circuit err in relying on that test to reject Bilski’s claim?
Rules
- Machine-or-Transformation (MoT): A process is likely eligible if tied to a particular machine or transforms an article to a different state.
- Abstract Ideas: Basic economic practices or mental steps, without meaningful limits, are not patent-eligible under §101.
- §101 is a gate: Even if eligible, claims must still meet novelty, non-obviousness, and disclosure standards.
Facts (Timeline)
Petitioners propose a process for hedging risk in energy/commodities trading; they seek a patent at the PTO.
PTO examiner rejects the application. The Board of Patent Appeals affirms the rejection.
Federal Circuit affirms: the claim is an abstract idea; it also relies on the MoT test as a key screen.
Petitioners appeal to the U.S. Supreme Court.
Arguments
Petitioners (Bilski)
- MoT is too narrow; business methods can be patentable.
- Risk-hedging process offers practical utility.
- §101 should not block claims just for being financial.
Respondent (PTO/Kappos)
- The claim is an abstract idea—a basic economic principle.
- No specific machine, no meaningful transformation.
- Allowing such claims would preempt fundamental practices.
Judgment
Held: The Supreme Court affirmed rejection of the claims. The risk-hedging method is an abstract idea. The Court also held that the machine-or-transformation test is not the sole test for §101; it is a useful clue, not a rule of law that excludes other ways to show eligibility.
Ratio
Ratio: Claims that preempt abstract ideas are ineligible under §101. The MoT test is a significant indicator of eligibility but not an exclusive gate.
Why It Matters
- Sets the modern approach to abstract ideas and §101.
- Keeps doors open for software and tech beyond MoT alone.
- Guides drafting: add meaningful limits and concrete application.
Key Takeaways
- MoT = helpful, not mandatory.
- Abstract economic ideas are not patentable.
- §101 is only the first screen.
- Claim concrete tech or transformation.
- Add limits to avoid preemption.
- Draft with software/hardware ties when real.
Mnemonic + 3-Step Hook
Mnemonic: B-M-A — Bilski says MoT is a Marker, not a must; beware Abstract ideas.
- Spot the abstract idea.
- Check MoT as a strong clue.
- Limit the claim with concrete tech or transformation.
IRAC Outline
Issue: Is MoT the only test for §101? Is Bilski’s risk-hedging process eligible?
Rule: §101 excludes abstract ideas. MoT is a clue, not a sole test.
Application: The claim preempts a basic economic practice with no specific machine/transformative step.
Conclusion: Ineligible. MoT helps analysis but does not control all §101 decisions.
Glossary
- §101
- The U.S. statute that defines what categories of inventions are eligible for patents.
- Machine-or-Transformation
- Test asking if a process is tied to a machine or transforms an article to a different state.
- Abstract Idea
- A fundamental principle or concept (often economic or mental) without concrete application.
FAQs
Related Cases
Software & §101
Use Bilski to frame later software and abstract-idea eligibility debates.
Tests & Clues
MoT remains influential as an eligibility clue, not a universal rule.
Popular & Recent Post
Comment
Nothing for now