Bilski: Le MOT juste?

In its decision in In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008), the Court of Appeals for the Federal Circuit adopted the Supreme Court’s “machine or transformation test” (the “MOT test”) of patentability in upholding the USPTO's rejection of a patent application for a method for hedging risks in commodity trading. The MOT test states that a process is patentable (1) if it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” In endorsing the MOT test, the Bilski court expressly rejected tests of patentability which had previously been applied to allow patents on business methods in other cases, such as State Street, 149 F.3d 1368 (Fed. Cir. 1998).

Strict application of this interpretation of the MOT test would apparently disqualify from patent protection a host of information-age processes, where the raw materials may be data, human or computer language, electronic signals, legal obligations, business risks, and organizational relationships. In the absence of a connection to a physical object or a particular machine, manipulation or transformation of such raw materials would not constitute patent-eligible subject matter. The requirement of a physical transformation could also call into question the validity of patents of diagnostic processes in which the transformation involved is a natural process, with the invention being a new interpretation of data from the process. Cases currently wending their way through the courts may help determine whether greater reliance on the MOT test will result in substantial limitations on patent protection.