The Bilski decision, published on October 30, changed the test for determining patent-eligible subject matter in the US.

In Ex Parte R Mark Halligan and Richard Weyand, the inventors appealed the USPTOs rejection of a method for determining trade secrets. Applying the so-called machine-or-transformation test - which the Federal Circuit set forth in Bilski as the governing test for determining patent eligibility - the Board upheld the rejection because the claims "do not limit the process steps to any specific machine or apparatus" and "because the data does not represent physical and tangible objects", but rather "intangible assets".

The decision is the second in which the Board has cited Bilski. In Ex parte Bo Li, the Board reversed the examiner's rejection of the appellant's so-called Beauregard claims, or computer system claims which have software stored on a computer readable media.

In that decision, the Board overturned the rejection because the examiner relied on the "useful, concrete, tangible" test, which the Federal Circuit in Bilski said was insufficient for determining patent eligibility.

Charles Macedo of Amster Rothstein & Ebenstein, who participated in a recent web seminar on Bilski with Managing IP, said of that decision: "If this position remains the law, then basically if the claims are properly drafted, computer-implemented inventions will continue to remain patent-eligible."

The December/January issue of Managing IP will include analysis of the Bilski decision as it applies the software, internet, financial services and life sciences industries.