Life After Bilski

Patents and Intellectual Property

Article Snapshot


Mark Lemley, Michael Risch, Ted Sichelman and R. Polk Wagner


Stanford Law Review, Vol. 63, No. 6, p. 1315, 2011


In Bilski v. Kappos, the Supreme Court accepted that business methods could be patented. The opinion left courts struggling to decide when ideas are too abstract to be patented. The patentability of abstract ideas results in overbroad patents.

Policy Relevance

Patent claims should be limited to a set of practical applications of an idea. This leaves room for later inventors to improve the invention.

Main Points

  • In 2010, in Bilski, the Supreme Court declined to rule that business methods were too abstract to be patented; patents on software raise similar issues.
  • Federal Circuit cases ruled that a process was patentable only if tied to a particular process or if it transformed an article to another state (the “machine-or-transformation” test).
    • The Supreme Court described this test as “useful and important.”
    • Since then, courts and the patent office have relied too much on this rule.
  • The machine-or-transformation test is flawed and unclear.
    • If “machine” means “any machine,” then any computer process is patentable.
    • Are bits of data “transformed” in a computer?
  • Courts should recognize that abstract ideas should not be patented to prevent inventors from claiming their ideas too broadly.
  • Under the machine-or-transformation test, a program that displays CAT scan results was patentable, but one that used calculations to shade computer images was not. The real issue is that the second patent was too broad.
  • Patent claims should be limited to a specific set of practical applications of an idea.
    • Such a limit would clarify the resulting patent.
    • Later inventors would have more leeway to improve the invention.
  • Courts need not define patentable or unpatentable subject matter, which is incoherent (it is hard to distinguish software from nonsoftware patents).
  • A test for overly broad claims allows courts to focus on the key question of whether the patentee’s claims are proportionate with the invention’s real contribution.


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