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July 15, 2010



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.

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

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.


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?

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.

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