Patentable Subject Matter, Abstract Ideas, Business Methods, and the Patent Eligibility Trilogy

Shauna R. Maloney

INTRODUCTION

Determining subject matter eligibility for business methods is a murky endeavor given the current state of patent law. The Supreme Court has issued two recent decisions on the topic: Bilski v. Kappos,¹ in 2010, and Mayo v. Prometheus in 2012.² The Federal Circuit, however, has continued to apply the machine or transformation test (hereinafter "M&T Test") over and over again, despite the Supreme Court’s criticism of its use. This leaves inventors, patent examiners, practitioners and judges (at every level) with little ability to predict whether protection is appropriate. Businesses and inventors need—and deserve—certainty in order to operate and plan effectively.³

This paper examines the current state of the law regarding subject matter eligibility and suggests the time is ripe for Congress to create a workable framework for application of subject matter eligibility rules. Section II discusses the Supreme Court’s decisions in Bilski and Mayo, including a recent Federal Circuit case now on appeal to the Supreme Court, CLS Bank Int’l v. Alice Corp. Pty. Ltd.⁴ Section III discusses the Supreme Court’s decisions in Gottschalk v. Benson,⁵ Parker v. Flook,⁶ and Diamond v. Diehr⁷ (hereinafter referred to collectively as the "Patent Eligibility Trilogy"). Lastly, Section IV implores Congress to reevaluate patentable subject matter, using the Patent Eligibility Trilogy for guidance.