There are four general categories of inventions that are eligible for patent protection. Specifically, they are processes, machines, manufactures and compositions of matter or their improvements. The following case, In re Ferguson, 2007-1232 (Fed. Cir. 2009) involves the issue of whether an invention to a new process is eligible for patent protection. The case makes clear that not all process inventions are eligible for patent protection. Only processes that pass muster under the machine-or-transformation test are eligible for patent protection. Under the machine or transformation test, process inventions are eligible for patent protection if (1) it is tied to a particular machine or apparatus or (2) it transforms a particular article into a different state or thing.
In In re Ferguson, Applicants submitted a claim directed to a method (i.e., process) of marketing a product. The Court analyzed whether the claimed invention passed the machine or transformation test. The closest claim limitation relating to a machine was the phrase “marketing force”. As defined in In re Nuijten, (Fed. Cir. 2007), a machine is a concrete thing, consisting of parts, or of certain devices and combination of devices. Based on this definition of machine, the Court refused to characterize “marketing force” as a machine or apparatus. The claimed invention also did not transform a particular article. Hence, the Court affirmed that the method claim was directed to subject matter ineligible for patent protection.
The Applicants also submitted a claim directed to a “paradigm” for marketing software. The Court analyzed whether the “paradigm” claim fit within one of the four categories of patent eligible subject matter. The Applicants pointed to the “company” limitation as being a “machine.” The Court refused to characterize “company” as a “machine” since “company” does not fit within the definition of “machine” as discussed above. The Applicants also conceded that a company cannot be touched. Hence, the Court affirmed that the paradigm claim is directed to subject matter ineligible for patent protection.