The Federal Circuit’s “machine-or-transformation” test as set forth in In re Bilski is more restrictive than required by this Court’s precedent and finds no support in any legislation. In practice, it has already been applied to strike down patents directed to methods of immunizing patients with improved efficacy and safety thereby casting a cloud on the validity of a great many process patents in the medical and biotechnological fields.The “machine-or-transformation” test is a useful starting point for analysis of patent eligibility of process claims. However, if a process claim is not tied to a particular machine or does not recite transformation of an article into a different state or thing, the inquiry should not stop there, as the process may still be patent eligible as long as it does not attempt to claim “laws of nature, natural phenomena, [or] abstract ideas.” Diamond v. Diehr, 450 U.S. 175, 185 (1981).
Monday, August 10, 2009
USF has filed an amicus brief in Bilski (which you can find on patently-o here).
USF argues that Bilski's impact on medical innovations is particularly troublesome. USF starts its discussion with the Constitution, and argues that medicine had been known for thousands of years as one of the "useful Arts." From Hippocrates (whose oath refers to medicine as "the art") to the first edition of the Encyclopædia Britannica (which defined medicine as "The art of preserving health...") to Thomas Jefferson (whose letters showed that he considered medicine one of the "useful Arts"), medicine was and is a "useful art." When Article I, Section 8 of the Constitution was drafted, the framers intended to include medicine as one of the "useful arts" to be protected.
USF next moves to Congress, and argues that when it enacted the first Patent Act, and ever since, it has consistently intended to include protecting medical innovations with patents. USF concludes: