Patent Law — Patentable Subject Matter — Federal Circuit Applies New Factors in Deciding Patentability of a Computer Program. — Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323 (Fed. Cir. 2011), reh'g and reh'g en banc denied, No. 2010-1544, 2011 U.S. App. LEXIS 25055 (Fed. Cir. Nov. 18, 2011)

• Published in: Harvard law review Vol. 125; no. 8; pp. 2167 - 2176
• Format: Journal Article
• Language: English
• Published: Cambridge Harvard Law Review Association 01.06.2012
• Subjects: Computer law; Computer programming; Computer software; Electronic commerce; Federal circuit courts; Industrial revolution; Internet; Inventions; Litigation; Machinery; Patent law; RECENT CASES; Software; Supreme Court; Supreme Court decisions; Supreme courts; Tests; Transformation; U.S.A; United States > US
• ISSN: 0017-811X; 2161-976X

The patentable subject matter test serves an initial screening function in patent law. It renders certain kinds of inventions unpatentable even before inquiry into more involved patentability requirements, such as novelty and non-obviousness, begins. The Supreme Court has stated that three specific categories of things absolutely cannot be patented: "laws of nature, physical phenomena, and abstract ideas. The Supreme Court, in Bilski v. Kappos, held that the machine-or-transformation test was a guide to patentability but was not the exclusive test. It stated that the patentable subject matter test had to be flexible enough to encompass developing technologies, particularly information-age technologies, and that an exclusive machine-or-transformation test was more appropriate for the industrial age. The Court, however, did not provide further guidance on other tests for abstractness, leaving potential patentees to wonder what inventions might fail the machine-or-transformation test and yet still be patentable.