In United States patent law, the machine-or-transformation test is a test of patent eligibility under which a claim to a process qualifies for consideration if (1) the process is implemented by a particular machine in a non-conventional and non-trivial manner or (2) the process transforms an article from one state to another.Stefania Fusco, "Is In re Bilski a Deja Vu?", 2009 Stan. Tech. L. Rev. P1
The origin of the test can be traced to the 1972 government's reply brief on the merits in the US Supreme Court case Gottschalk v. Benson:The Benson opinion explains several examples. In Corning v. Burden, 56 U.S. (15 How.) 252 252 (1853), the court stated that "[o]ne may discover a new and useful improvement in the process of tanning, dyeing, etc., irrespective of any particular form of machinery or mechanical device." Id. at 267-68. The Benson court explained that the illustrative processes in Corning — "the arts of tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores"—are instances where "the use of chemical substances or physical acts, such as temperature control, changes articles or materials. The chemical process or the physical acts which transform the raw material are, however, sufficiently definite to confine the patent monopoly within rather definite bounds." . In , the court upheld a patent on a process for manufacturing "superfine" flour, although the claim was not limited to any particular form of machinery. Such a process "is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing." Id. at 788. The Benson court also explained , as a case in which the process transformed fat into glycerin by uniting a water molecule with a fat molecule. .
The test was also mentioned in the 1970s patent-eligibility trilogy—Gottschalk v. Benson, Parker v. Flook, and Diamond v. Diehr.
The "machine-or-transformation test" was finally endorsed in 2008 by Federal Circuit in Bilski,545 F.3d 943 (Fed. Cir. 2008). See also In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009),. while explicitly overruling its earlier “useful, tangible and concrete result” test adopted in 1998 in State Street Bank & Trust Co. v. Signature Financial Group, Inc. Numerous legal commentators praised the "machine-or-transformation" test for its simplicity, objectivity, reliability, and independence of the result from time and prior art availability. Judge Pauline Newman wrote a strong dissent arguing for a broader definition of patentable processes.
On appeal, in its 2010 decision in Bilski v. Kappos the US Supreme Court refused to endorse the "machine-or-transformation" test as the sole criterion for patentable subject matter, stating instead, that machine-or-transformation test "while useful, is not an exclusive test for determining the patentability of a process". Following Pauline Newman's dissent, the SCOTUS opined, that future cases might present fact patterns calling for a different rule from that applicable to past cases, and therefore the machine-or-transformation test was just a "clue" (i.e. it is neither a necessary nor sufficient test- see below) for patent-eligible subject matter.The court said that "[a] process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a 'different state or thing.' We do not hold that no process patent could ever qualify if it did not meet the requirements of our ... precedents."
In the wake of the 2010 Supreme Court's opinion in Bilski v. Kappos, rejecting machine-or-transformation as the sole test of patent eligibility, and confirming that it is only a "useful clue," it is now clear, that this test is only a way to measure whether the patent claim in issue preempts substantially all applications of the underlying idea or principle on which a patent is based—such preemption being a far more basic and general test of patent eligibility or ineligibility.See Alice Corp. v. CLS Int'l Bank, 134 S. Ct. 2347, 2357 (2014) ("A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].' ").
Supreme Court has held that this is not the only test
The Supreme Court has held. that the machine-or-transformation test is not the sole test for the patent-eligibility of processes. The certiorari petition in Bilski challenged that proposition.See Bilski petition at 16-21, and the Supreme Court's Bilski opinion expressly rejected the Federal Circuit's declaration that it was the exclusive test to apply; despite a dissent on the proper rationale, the court was unanimous on this point.
In Gottschalk v. Benson, the court expressly reserved the point and declined to adopt the test as exclusive, stating:
It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a "different state or thing." We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents.
The government had made an argument in its brief in Benson that the Court should so hold and that it was impossible to rationalize the case law any other way. The Court, in its ruling, refused or failed to agree with that argument.See Petitioner's Reply Brief on writ of certiorari in Benson, at 9 ("we submit that the cases follow such a rule –– implicitly or explicitly –– and that they cannot be rationalized otherwise").
Outstanding issues The Benson and Bilski opinions left important details of the machine-or-transformation test unexplained. The details include what kind of transformation is sufficient to confer patent-eligibility and what are the characteristics of a "particular machine" that confers patent-eligibility.
Transformation Transformation of an article from one thing or state to another is said to be a clue to patent eligibility. Thus, in Benson, the court stated that "Transformation and reduction of an article `to a different state or thing' is the clue to the patentability of a process claim...." A hundred years earlier, the Court had said, "A process is ... an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing."
What is an article?
The Benson opinion indicated that the article had to be a physical object, such as a lump of rubber (to be transformed from raw to cured state), a piece of leather (to be transformed from untanned skin to tanned leather),As Benson explains, the vulcanization of rubber and tanning of leather are examples of processes that can be carried out "irrespective of any particular form of machinery or mechanical device," according to the decision in O'Reilly v. Morse, 56 U.S. (15 How.) 62 (1853). See . or a pile of flour (to be transformed from coarse to superfine particles).As Benson explains, Cochrane "involved a process for manufacturing flour so as to improve its quality. The process first separated the superfine flour and then removed impurities from the middlings by blasts of air, reground the middlings, and then combined the product with the superfine." . The Federal Circuit's In re Schrader opinion, however, indicated that the article could be an electronic signal representative of a physical parameter, such as an EKG ("electrocardiograph signals representative of human cardiac activity ") or seismogram ("seismic reflection signals representative of discontinuities below the earth's surface") signal.22 F.3d 290 (Fed. Cir. 1994). Thus, the Schrader opinion chided the Supreme Court for speaking of physical "articles" rather than "subject matter," and thus only "imperfectly" reflecting the relevant legal principle. The Bilski court appears to adhere to the Schrader formulation, rather than that of Benson, so that it seems to consider a signal transformation patent-eligible when the signal is representative of certain types of physical actions. But a transformation of signals representative of monetary or legal relations does not qualify, given the affirmance of the PTO's rejection of Bilski's claim and perhaps the Bilski court's treatment of State Street Bank, as well.As the Bilski court explained, "legal obligations, organizational relationships, and business risks" are just "abstract constructs." See Bilski, 545 F.3d at 962.
How much of a transformation is needed?
Judge Rader asked in his Bilski dissent, "What form or amount of 'transformation' suffices?" The court did not answer his question. It may be that a "substantial" physical or chemical change of properties that is material to the objectives of the invention is required, but this is still to be resolved.
A "particular machine" Benson and Bilski speak about the process being tied to "a particular machine" while Flook says that the mechanical implementation of a natural principle must be "inventive":
Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application.. See also ("The application of an old process or machine to a similar or analogous subject, with no change in the manner of application and no result substantially distinct in its nature, will not sustain a patent even if the new form of result had not before been contemplated. ...On the other hand, if an old device or process be put to a new use, which is not analogous to the old one, and the adaptation of such process to the new use is of such a character as to require the exercise of inventive skill to produce it, such new use will not be denied the merit of patentability.").
In Flook the implementation was conceded to be conventional and no departure from the prior art. Therefore, the principle with or plus a conventional implementation was patent-ineligible. The Flook Court also cited and relied on the same principle as being illustrated in Funk Brothers Seed Co. v. Kalo Inoculant Co., in which the natural principle was implemented in a manner so trivial on its face that the patent on the implementing article of manufacture was tantamount to a patent on the natural principle.The inventor discovered desirable properties of certain bacteria and claimed as an invention a package consisting of the bacterial material put into a container in order to sell it.
This aspect of the machine-or-transformation test remains to some extent an uncertain and controversial issue. For a time it was asserted that it remains "unclear whether tying a process to a general purpose computer is sufficient to pass the machine-or-transformation test." But in 2014 the Supreme Court expressly held in the Alice case that simply adding to a claim "do it with a computer" could not make for patent eligibility. The Alice case and its progeny also cast doubt on the assertion that use of the "programmed computer claim format" overcomes the patent-eligibility problem.This claim format relies on the legal doctrine that a new program makes an old general purpose digital computer into a new and different machine. The issue is discussed in the article--the Old Piano Roll Blues (analogizing the argument to saying that putting a new piano roll into an old player piano turns the latter into a new machine). The Federal Circuit's Bilski opinion explicitly left the question unresolved.The Bilski opinion said: "We leave to future cases the elaboration of the precise contours of machine implementation, as well as the answers to particular questions, such as whether or when recitation of a computer suffices to tie a process claim to a particular machine." In the opening words of the Benson opinion, however, this statement occurs: