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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.[1]
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:[2][3]
"we submit that the cases follow such a rule [machine or transformation]—implicitly or explicitly—and that they cannot be rationalized otherwise."[4]
The test was also mentioned in the 1970s patent-eligibility trilogy—Gottschalk v. Benson,[2] Parker v. Flook,[5] and Diamond v. Diehr.[6]
The "machine-or-transformation test" was finally endorsed in 2008 by Federal Circuit in Bilski,[7] 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.[8] 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.[9]
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.[10]