USPTO Issues Memo to Examiners on Bilski Decision

    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.

Comments

[EG]

Sydney,

Others have commented, as have I, that this memo is inconsistent with SCOTUS' opinion (by a 9-0 vote) that MoT isn't the exclusive test for patent-eligible subject matter under 35 USC 101. In fact, as others have commented, compliance with the MoT test indicates, at most, prima facie patent-eligible subject matter under 35 USC 101, but failure to comply with the MoT test doesn't necessarily indicate patent-ineligible subject matter.

That the USPTO has adopted this position initially on Bilski is frustrating but not surprising. Frankly, with no real guidance from our Judicial Mount Olympus in Bilski, the USPTO, the Federal Circuit, and we "mere mortals" have been left to struggle on our own as to how to objectively determine patent-eligible subject matter. Time to consult the Oracle at Delphi or get a Ouija board. Better yet, why not use 35 USC 112 as the initial screen, instead of 35 USC 101.

[Skeptical]

Better late than never. Sydney, what is your take on the legality of burden shifting that the memo induces?

[Sydney]

I do not believe that the memo shifts the burden; however, I have not looked into this issue in great detail. The MPEP provides that the examiner should first establish a prima facie case of unpatentability and that the burden then shifts to the applicant to show why the claim is patentable. The memo does not seem to change this burden, even if it is otherwise inconsistent with the Supreme Court decision.

[Skeptical]

Sydney,

How in your view does the memo avoid a burden shifting? Do you think mere assertions satify the prima facie case?

Considereing what EG indicates (that MoT cannot distinguish patent INeligibility), how in your view has the Office satisfied its initial legal duty?

[Sydney]

You make a good point. Again, I have not spent much time analyzing this issue so I do not have a definitive answer. I agree that the MoT test alone cannot establish a prima facie case. In the memo, examiners are instructed to reject unless it is clear that the invention is not directed to an abstract idea. It seems like whether a proper prima facie case is established will depend on how much analysis the examiners actually do with respect to the abstract idea. Mere assertions would not be enough.