Machine-or-Transformation Test: Everything You Need to KnowPatent Law ResourcesUtility Patent
Before 2010, the machine-or-transformation test was how the courts determined patent eligibility; requires claims be tied to a particular machine or apparatus.8 min read
2. Particular Machine
3. Particular Article
4. What Is Patent Eligible?
5. Why Is the Machine-or-Transformation Test Important?
6. Shifting Level of Importance
7. Prior to the Machine-or-Transformation Test
8. Evolution of the Machine-or-Transformation Test
9. Why Should You Consider the Machine-or-Transformation Test?
10. Criticism of the Machine-or-Transformation Test
11. Problems for Litigators
12. Uncertain Times
13. The Machine-or-Transformation Test at Work
14. Need More Guidance on the Machine-or-Transformation Test?
What Is the Machine-or-Transformation Test?
The machine-or-transformation test was the sole test used by the court, prior to 2010, to determine patent eligibility. The test requires claims to be tied to a particular machine or apparatus, or have it transform an article from one state to another.
In 2010, the U.S. Supreme Court argued in Bilski v. Kappos that a patentable process can't be solely tied to a particular machine or apparatus or involve transformations of a particular article into a different state of matter. This means that many software patents and business method patents remain patentable.
The Supreme Court decided that laws of nature, natural phenomena, and abstract ideas are not eligible for patents. While the machine-or-transformation test is no longer the sole test to determine patent eligibility, it is still a critical test to assessing patent claims.
In the first prong of the machine-or-transformation test, patent eligibility requires that the process be tied to a particular machine or apparatus.
In Ultramercial Inc. v. Hulu LLC, the Federal Circuit Court decided that a general purpose computer and the internet could not be considered a particular machine and eliminated patent eligibility.
Resulting from this decision, this particular machine precedent has been set and expanded to include receivers, transmitters, communication devices, data-entry devices, input devices, network computers, and central transaction processing computers.
The second section of the machine-or-transformation test refers to a particular article. In Ultramercial Inc. v. Hulu LLC, the Federal Circuit Court clarified the definition of particular article.
Transformation must take a physical object or substance into a new state. Transformation by using a computer is not patentable. Transformation by transfer of data is also not patentable.
This decision brings a new understanding to the particular article term. This understanding is important when using the machine-or-transformation test to decide patent eligibility. Inventions that do not pass the transformation test are not eligible for a patent, and the machine-or-transformation test is but one tool that courts can use to investigate patent eligibility.
What Is Patent Eligible?
Not every invention is eligible to be patented. Following from the 2010 Bilski case, the Supreme Court has issued broad guidelines that help courts decide if a material or invention should be issued a patent or denied.
- The material or invention must fall into one of the following patent-eligible categories:
- Composition of matter
- Any improvement thereof
- The material or invention must not fall into one of the fundamental principle categories which can't be patented.
- Laws of nature
- Natural phenomena
- Abstract Ideas
Why Is the Machine-or-Transformation Test Important?
Through many years and many court decisions, the machine-or-transformation test has gone through different levels of importance. For some time, the machine-or-transformation test was the most important test for patent eligibility. Starting in 2010, the machine-or-transformation test was used less when deciding patent eligibility.
Shifting Level of Importance
- From 2008 to 2010: The machine-or-transformation test was the sole test for determining whether an invention was patent eligible.
- 2010: The U.S. Supreme Court case Bilski v. Kappos decided that the machine-or-transformation test should not be the only test when determining patent eligibility. The decision made no recommendation for an extra test.
- 2014: The Federal Circuit Court's hearing of Ultramercial v. Hulu renewed interest in the machine-or-transformation test. This decision reviewed and clarified language.
Prior to the Machine-or-Transformation Test
The United States Court of Appeals for the Federal Circuit recognized the technology revolution. With the wide availability of the internet, the court realized that patent law would need to change. With that change would come change to patent eligibility. This change opened the door for business method patents.
In 1998, the Federal Circuit Court decided upon patent eligibility in the State Street Bank & Trust v. Signature Financial Group Inc. case using the "useful, concrete, and tangible result test." This test was once used for making patent eligibility decisions until Bilski v. Kappos in 2010.
Technological Arts Test
The Technological Arts Test was used before the machine-or-transformation test to decide patent eligibility. This test aimed to limit the number of allowable business method patents. The number of business method patents became an issue after the "useful, concrete, and tangible test result" was interpreted so broadly.
The test limited business method patent eligibility to those using computers or other electronic processing devices. In 2005, the Federal Circuit Court decided that a judicially created Technological Arts Test was not possible and that this test should not be used as a precedent to decide patent eligibility.
Evolution of the Machine-or-Transformation Test
In 2008, the Federal Circuit Court made a change to how courts interpret and use the machine-or-transformation test. The 2008 decision allowed the machine-or-transformation test to be the only test used when deciding patent eligibility.
Those applying for patents should be aware that new tests may be used in the future understanding of patent eligibility. Even then, courts and applicants were aware that this concern was a fluctuation that might change again.
In 2010, the Supreme Court redirected the understanding that the machine-or-transformation test was the only test that should be used to decide patent eligibility. This decision came about during the Bilski v. Kappos case. The change opened the door for new tests to be created and used. The Supreme Court didn't make any recommendations on what those tests should be.
In this decision, the Supreme Court also noted that the machine-or-transformation test might also need to be updated to better fit the Information Age.
Although rejected as being not the only test for patent eligibility, this test was not obsolete. The Supreme Court restated that the machine-or-transformation test is useful in deciding patent eligibility.
Criticism of Bilski v. Kappos
After the Supreme Court's decision in Bilski v. Kappos in 2010, criticism arose. Litigators argued that the Supreme Court's decision that an abstract idea isn't patentable without further explanation about what makes up an "abstract idea" created confusion.
2014: Ultramercial Inc. v. Hulu LLC
In this Federal Circuit Court case, justices reiterated that the machine-or-transformation test was still useful but had limitations.
In their judgements, the justices took time to clarify the meaning of particular machine and particular article.
2014: Alice Corp. v. CLS Bank International
This case is the most recent understanding of the machine-or-transformation test. In their decision on Alice Corp. v. CLS Bank International, the Supreme Court put forth the idea that an idea could not be patented simply because someone implemented the idea on a computer.
This ruling is similar and reinforces the ruling in the 2012 Mayo v. Prometheus. Similarly, the court stated that two criteria must be met here to be patentable.
- The court must decide if the claim is an abstract idea.
- The court must decide if the claim adds something new and is inventive.
This decision left many businesses and patent holders concerned about their patents and their validity. The adjustment in how courts interpreted the machine-or-transformation test makes presently held patents unstable if challenged in court.
Those applying for patents today will also have to face the uncertainty of how courts will interpret and implement the machine-or-transformation test to decide patent eligibility.
Why Should You Consider the Machine-or-Transformation Test?
The machine-or-transformation test has gone through a few variations throughout the years and has been more heavily relied upon at some times than others. This variability makes applying for patents slightly more stressful. Based on the history described above, what is and what isn't patent eligible seems to shift periodically.
When putting together a patent application, inventors should consider whether the court is paying little or much attention to the machine-or-transformation test.
By the time a patent receives approval or is possibly challenged in a legal case after approval, the machine-or-transformation test may be more heavily relied upon by the courts when deciding patent eligibility.
As of 2017, the courts are relying upon the machine-or-transformation test when deciding patent eligibility, following from the 2014 Supreme Court Ultramercial Inc. v. Hulu LLC case.
Understanding the machine-or-transformation test and understanding the intricacies of the two prongs described above may help patent applicants from being denied a patent.
Criticism of the Machine-or-Transformation Test
In 2014, the Supreme Court heard Alice Corp. v. CLS Bank International. This case dealt with patent eligibility of a computer-implemented service. One of the opinions that came out of this case was that the machine-or-transformation test was not enough to address patent eligibility questions.
The court argued up that the machine-or-transformation test was outdated. The test might have been useful when deciding upon patent eligibility during the Industrial Age, but not during the Information Age.
The criticism recommended that the machine-or-transformation test should not be the only test used to decide patent eligibility. Alice Corp. v. CLS Bank International didn't make any recommendations about what the new test should be. This result leaves the courts and patent applicants open to uncertainty about what is patentable and what isn't.
Problems for Litigators
The abrupt and multiple changes in the use and interpretation of the machine-or-transformation test have made patent law challenging for litigators, patent applicants, and patent lawyers.
These difficulties present themselves in how the machine-or-transformation test gets interpreted. As the interpretation changes, what can and cannot be patented also changes. The changes also affect how a patent application needs to be completed.
The Alice Corp. v. CLS Bank International created further uncertainty when using the machine-or-transformation test by leaving room for interpretation. Patent litigators must now decide if the material being patented is more like a computer-implemented method for curing rubber, which is patent eligible according to Diamond V. Diehr (1981), or a computer-implemented method for using shadow credit records, which is not patent eligible according to Alice.
This confusion causes additional problems for litigators, inventors, and patent applicants to know whether their invention will be considered patent eligible or not. Much uncertainty remains in the current realm of patent eligibility.
The Machine-or-Transformation Test at Work
In 2012, the Supreme Court heard the case Mayo Collaborative Services v. Prometheus Laboratories Inc. This case brought a new level of understanding to implementing the machine-or-transformation test at work.
In this case, the Supreme Court decided that the contested drug dosage levels for thiopurine drugs to treat autoimmune diseases were not eligible for a patent, as they should be considered a law of nature. This set precedent that will be interesting in future patent eligibility cases, especially those dealing with diagnostic gene patents and personalized medicine patents. This new field is quickly expanding and should bring more understanding to using the machine-or-transformation test in patent eligibility.
The Supreme Court also noted that the dosage level was not eligible for a patent because it didn't hold to the rule that there must be a transformative step. This argument upholds the standards of the machine-or-transformation test.
Need More Guidance on the Machine-or-Transformation Test?
The machine-or-transformation test has varied in use and importance throughout the last 10 years and is important when applying for a patent. A patent application can be complicated and expensive. If you need to hire an attorney to assist you with a patent application or a case where the machine-or-transformation test could come into play, you can post your legal need and receive free custom quotes from the top 10% of patent lawyers from UpCounsel.