On October 30, 2008, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) issued a decision that has potentially significant implications for innovation in many fields, but particularly in the online commerce and the software industry. Indeed, with the issuance of In re Bilski, the Federal Circuit has substantially changed its position regarding the criteria for the patentability of a claim to a process and, thus, has reconsidered its own precedent, State Street Bank & Trust Co. v. Signature Financial Group, Inc.
Under State Street, claims to a process were eligible for patent protection as long as they produced a “useful, concrete and tangible result.” Now, the Federal Circuit considers “that inquiry . . . insufficient to determine whether a claim is patent-eligible under §101,” and has adopted the “machine-or-transformation test.” Therefore, today, an inventor wishing to acquire a patent on a new process needs to ensure that her innovation is either connected to a specific machine or transforms an article.