By Sydney Kokjohn --
On June 28, 2010, the Acting Commissioner For Patent Examination Policy, Robert W. Bahr, issued a memorandum to USPTO examiners regarding the Supreme Court's recent Bilski v. Kappos decision. Commissioner Bahr summarized the decision, noting that the Court:
(1) confirmed that 35 U.S.C. § 101 specifies four categories of inventions: process, machines, manufactures, and compositions of matter and that laws of nature, physical phenomena, and abstract ideas were not patentable;
(2) used past precedent (Benson, Flook, and Diehr) to find that Bilski's business method was not a patentable process because it was an attempt to patent abstract ideas;
(3) concluded that the machine-or-transformation test is not the sole test for patentable subject matter, although it is a useful clue;
(4) indicated that some business methods may still be patentable; and
(5) indicated that Section 101 is only a threshold inquiry and that the invention must also satisfy all of the Patent Act's requirements.
The memo gave instruction to examiners, stating:
Examiners should continue to examine patent applications for compliance with section 101 using the existing guidance concerning the machine-or-transformation test as a tool for determining whether the claimed invention is a process under section 101. If a claimed method meets the machine-or-transformation test, the method is likely patent-eligible under section 101 unless there is a clear indication that the method is directed to an abstract idea. If a claimed method does not meet the machine-or-transformation test, the examiner should reject the claim under section 101 unless there is a clear indication that the method is not directed to an abstract idea. If a claim is rejected under section 101 on the basis that it is drawn to an abstract idea, the applicant then has the opportunity to explain why the claimed method is not drawn to an abstract idea.
In sum, examiners should still apply the machine-or-transformation test first, but should then consider whether the invention is directed to an abstract idea. The USPTO memo states that the Office would continue to review Bilski and establish further guidance. It will be interesting to see if courts interpret Bilski in a similar manner.