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Unpublished Paper
Is the Federal Circuit’s eligible subject matter test still Useful, Tangible, and Concrete after B.P.A.I.’s Bilski opinion?
ExpressO (2008)
  • Puneet S Sarna, Illinois Institute of Technology
Abstract

Congress has defined the eligible subject matter for patenting in 35 U.S.C. § 101. The Supreme Court has interpreted § 101 to exclude laws of nature and natural phenomena from eligible subject matter. The Federal Circuit has followed Congressional intent and Supreme Court’s precedence in devising the “useful, tangible, and concrete” result test for eligible subject matter. The B.P.A.I. has devised its own physical transformation test to decide whether the subject matter is patentable.

This paper analyzes the Supreme Court’s precedence, Federal Circuit’s jurisprudence, and B.P.A.I.’s Bilski decision on eligible subject matter. The paper then concludes that the B.P.A.I.’s physical transformation test is not defendable because the test is based on misconstrued interpretation of Supreme Court precedence and the test does not add any substance to already existing § 101 jurisprudence. On the other hand, the Federal Circuit's test has been faithful to Supreme Court's precedence and provides useful guidance to lower courts on the subject matter inquiry. The Federal Circuit should therefore overrule B.P.A.I's physical transformation test and adhere to its own test on eligible subject matter.

Keywords
  • Patents Eligible Subject Matter
Disciplines
Publication Date
May 21, 2008
Citation Information
Puneet S Sarna. "Is the Federal Circuit’s eligible subject matter test still Useful, Tangible, and Concrete after B.P.A.I.’s Bilski opinion?" ExpressO (2008)
Available at: http://works.bepress.com/puneet_sarna/1/