To Bilski, and Beyond: An Empirical Analysis of Judicial Opacity on Patent Law and the Modern Administrative State

Patentable subject matter is a critical issue in patent litigation, both at the administrative and judicial level. In a 2010 decision, Bilski v. Kappos, the Supreme Court significantly altered the standard for defining what is patentable subject matter by eliminating the physicality requirement and ruling that the Federal Circuit’s “machine or transformation test” (“MOT”) was no longer the sole litmus test for determining the patent eligibility of a process claim, but rather, was an “investigative clue.” Many academics and commentators predicted that the Bilski decision would have an enormous impact on patent applicants, litigants, examiners, and other participants in the patent system. To date, however, there has been no comprehensive empirical study of Bilski’s actual impact on patentable subject matter, either at the Patent and Trademark Office (“PTO”) or at the courts.This Note fills this gap by not only being the first to undertake an empirical study of Bilski’s actual impact, but also by being the first to empirically study the doctrine of patentable subject matter as applied by PTO examiners. We analyzed eight years of PTO decisions — four years before and after Bilski was decided. We found compelling evidence that not only are PTO examiners more likely to issue Section 101 rejections for business method patents post-Bilski as compared to pre-Bilski, but they are also more likely to continue to rely on the MOT test in making Section 101 patentable subject matter rejections for applications that fall under business methods versus other classes, such as telecommunications. Finally, our results strongly suggest that patent applicants are picking up on these entrenched behavioral norms at the PTO by being more likely to cite to machines or recite transformations when drafting business method applications, as opposed to applications for medical diagnostics. These results present profound policy implications for business method patents, for the doctrine of patentable subject matter, and also for administrative law, more generally.