In view of the Supreme Court’s decision in Bilski v. Kappos, the USPTO on July 27, 2010 released Interim Bilski Guidelines to its Examining Corp. for determining subject matter eligibility ( “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos”).
Machine-or-Transformation Test | Factor-Based Inquiry
Overall, the guidelines rely primarily upon the Machine-or-Transformation test. Although the guidelines state that the Supreme Court indicated in Bilski v. Kappos that the machine-or-transformation test is not the sole test for determining patent subject matter eligibility and that “Bilski held open the possibility that some claims that do not meet the machine-or-transformation test might nevertheless be patent-eligible,” the guidelines also state: “to date, no court presented with a subject matter eligibility issue, has ever ruled that a method claim that lacked a machine or a transformation was patent-eligible.” (43924) The present guidelines also indicate that “this additional guidance, which builds upon the 2009 Interim Instructions, is a factor-based inquiry.”
Prior USPTO Guidance
The Federal Register notice indicates that the present patent subject matter eligibility guidelines are effective July 27, 2010 and supplement the prior patent subject matter eligibility guidelines that were released on August 24, 2009 (“Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. 101”). However, the Federal Register notice also indicates that the present guidelines “supersede previous guidance on subject matter eligibility that conflicts with the Interim Bilski Guidance.”
Present USPTO Guidance | Highlights
- “Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to the patent-eligibility requirement of 35 U.S.C. 101. Thus, Office Personnel should state all non-cumulative reasons and bases for rejecting claims in the first Office Action.” (43923)
- “The Bilski Court underscored that the text of §101 is expansive … (‘In choosing such expansive terms … modified by the comprehensive ‘any’, Congress plainly contemplated that the patent laws would be given wide scope.’)(quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980))” (43923)
- “The Court also made clear that business methods are not ‘categorically outside of §101′s scope..” (43923)
- “Examiner’s are reminded that §101 is not the sole test for determining patentability” (43923)
- “The §101 patent-eligibility inquiry is only a threshold test. Even if an invention qualifies … the claimed invention must also satisfy ‘the conditions and requirements of this title.’ §101 Those requirements include that the invention be novel, see §102, nonobviousness, see §103, and fully and particularly described. see §112 … therefore, Examiners should avoid focusing on issues of patent-eligibility under §101 to the detriment of considering an application for compliance with the requirements of §102, §103, and §112, and should avoid treating an application solely on the basis of patent-eligibility under §101 except in the most extreme cases. ” (43923-43924)
- “The recitation of some structure, such as a machine, or the recitation of some transformative component will in most cases limit the claim to such an application. However, not all such recitations necessarily save the claim” (see Flook) (43924)
- “The fact that the steps of a claim might occur in the ‘real world’ does not necessarily save it form a section §101 rejection. Thus, the Bilski claims were said to be drawn to an “abstract idea” despite the fact that they included steps drawn to initiating transactions.” (43924)
- “Bilski also held that the additional, narrowing, limitations in the dependent claims were mere field of use limitations or insignificant postolution components, and that adding these limitations did not make the claims patent-eligible.” (43924)
- “Prior to the adoption of the machine-or-transformation test, the Office had used the ‘abstract idea’ exception in cases where a claimed ‘method’ did not sufficiently recite a physical instantiation. See, e.g., Ex parte Bilski, No. 2002-2257, slip op. at 46-49 (B.P.A.I. Sept. 26, 2006)(informative), http://www.uspto.gov/ip/boards/bpai/decisions/inform/fd022257.pdf. Following Bilski, such an approach remains proper.” (43924)
- “Each of the factors relevant to the particular patent application should be weighed to determine whether the method is claiming an abstract idea by covering a general concept, or combination of concepts, or whether the method is limited to a particular practical application of the concept.” (43926)
- “Sections 102, 103, and 112 are typically the primary tools for evaluating patentability unless the claim is truly abstract.” (43926)
- “If the factors indicate that the method claim is attempting to cover an abstract idea, the examiner will reject the claim under §101, providing clear rationale supporting the determination that an abstract idea has been claimed, such that the examiner establishes a prima facie case of patent-ineligibility. The conclusion made by the examiner must be based on the evidence as a whole.” (43926)
Evaluating Method Claims for Subject Matter Eligibility | Factors to be Considered
The following document (“101 Method Eligibility Quick Reference Sheet“) which was generated by the USPTO summarizes the primary factors that should be considered in furthering a subject matter eligibility inquiry. More specifically, this document includes: factors weighing toward eligibility, factors weighing against eligibility, examples of general concepts, and indicates that the prior USPTO subject matter eligibility guidance should be reviewed for a “detailed explanation of the terms machine, transformation, article, particular, extrasolution activity, and field-of-use.” Additionally, please note that this “Quick Reference Sheet” is a summation of the items that are included in the Federal Register notice at 43925 and 43926.
Public Comments | Deadline
The Federal Register notice indicates that any member of the public may submit written comments regarding these guidelines; however, said comments must be received on or before September 27, 2010 and no public hearing will be held. Additionally, the Notice states “the office is especially interested in receiving comments regarding the scope and extent of the holding in bilski” and includes a number of specific questions for public comment:
“1. What are examples of claims that do not meet the machine-or-transformation test but nevertheless remain patent-eligible because they do not recite an abstract idea?
2. What are examples of claims that meet the machine-or-transformation test but nevertheless are not patent-eligible because they recite an abstract idea?
3. The decision in Bilski suggested that it might be possible to ‘defin[e] a narrower category or class of patent applications that claim to instruct how business should be conducted,’ such that the category itself would be unpatentable as ‘an attempt to patent abstract ideas’ Bilski slip op. at 12. Do any such ‘categories’ exist? If so, how does the category itself represent an ‘attempt to patent abstract ideas?’”
Comments should be sent by email/facsimile (bilski_guidance@uspto.gov | 571.273.0125) or by mail (Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450), with email being the preferred delivery means.
USPTO Documents
Memo from Robert W. Bahr, Acting Associate Commissioner for Patent Examination Policy (this document includes the below listed documents): http://www.uspto.gov/patents/law/exam/bilski_guidance_27jul2010.pdf
101 Method Eligibility Quick Reference Sheet: http://www.uspto.gov/patents/announce/bilski_qrs.pdf
Federal Register Notice: http://edocket.access.gpo.gov/2010/pdf/2010-18424.pdf
Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. 101 (released August 24, 2009): http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-25_interim_101_instructions.pdf