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Supreme Court Overrules Federal Circuit’s Exclusive Machine-or-Transformation Test, but Affirms the Lower Court’s Decision on the Bilski Patent Claims

June 28, 2010

Related Professionals: Jakes, J. Michael

Press Release

June 28, 2010

Contact:    Tom Parnell, Schwartz Communications
                    413.262.2404 cell     

Supreme Court Overrules Federal Circuit's Exclusive Machine-or-Transformation Test, but Affirms the Lower Court's Decision on the Bilski Patent Claims


WASHINGTON, DC - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, one of the world’s largest intellectual property law firms, commented on today’s decision by the U.S. Supreme Court in Bilski v. Kappos, a landmark case on the patentability of business methods. Finnegan Partner J. Michael Jakes, who argued the case before the Court stated, “We are disappointed by today’s decision because we believed the Bilski/Warsaw claims should be patentable under the broad language of the Patent Act. We are pleased, however, that the Court rejected the Federal Circuit’s very limiting “machine-or-transformation” test and confirmed that business methods are not excluded from patenting. In reaffirming that section 101 of the Patent Act should be interpreted broadly, the Court’s decision will encourage continued innovation in today’s information economy. We will work within the guidance provided by the Court to revise the Bilski/Warsaw claims and obtain the patent protection our client has sought for more than ten years.”

Bilski v. Kappos was argued at  the Supreme Court on November 9, 2009, to ask the court to reconsider the decision issued on October 30, 2008, by the U.S. Court of Appeals for the Federal Circuit which set forth a test requiring that a patentable process either be tied to a machine or apparatus or involve a transformation of one thing into something else. Background information about the case is available on Finnegan’s website by clicking here.

About Finnegan
With more than 375 intellectual property lawyers, Finnegan is one of the largest IP law firms in the world. From offices in Washington, DC; Atlanta, Georgia; Cambridge, Massachusetts; Palo Alto, California; Reston, Virginia; Brussels, Belgium; Shanghai, China; Taipei, Taiwan; and Tokyo, Japan, the firm practices all aspects of patent, trademark, copyright, and trade secret law, including counseling, prosecution, licensing, and litigation. Finnegan also represents clients on IP issues related to international trade, portfolio management, the Internet, e-commerce, government contracts, antitrust, and unfair competition. For additional information on the firm, please visit