A twelve-judge panel of the Federal Circuit has dealt the concept of business-process patents what appears to be a significant blow in In re Bilski, a case decided yesterday:
“We hold that the applicants’ process as claimed does not transform any article to a different state or thing,” the majority opinion said.
“Purported transformations or manipulations simply of public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances,” added the opinion written by Chief Judge Paul Michel. Three judges dissented.
You might say business process patents hit a concrete wall. But while you’d have a fine pun you would not be quite accurate. As usual we defer here to Dennis Crouch, the nation’s leading patent blogger:
To be clear, the machine-or-transformation test is not a physicality test – i.e., a claim can still be patentable even if it does not recite sufficient “physical steps.” On the flip-side, “a claim that recites ‘physical steps’ but neither recites a particular machine or apparatus, nor transforms any article into a different state or thing, is not drawn to patent-eligible subject matter.” Here, the court spelled out the specific issue in mind: a claimed process where every step may be performed entirely in the human mind. In that situation, the machine-or-transformation test would lead to unpatentability. “Of course, a claimed process wherein all of the process steps may be performed entirely in the human mind is obviously not tied to any machine and does not transform any article into a different state or thing. As a result, it would not be patent-eligible under § 101.”
Which isn’t to say that “process steps [that] may be performed entirely in the human mind” don’t have their own charm. They just can’t be patented. Not that there’s anything wrong with that.