By James DeGiulio --
On July 27, 2010, the U.S. Patent and Trademark Office published Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos in the Federal Register, which provided examiner guidelines for process claim eligibility in light of the Supreme Court's Bilski decision. For a summary of the Interim Guidance, see "USPTO Issues Memo to Examiners on Bilski Decision." In a Sepember 27 letter by Intellectual Property Owners Association (IPO) president Doug Norman, the IPO generally declares its support for the Interim Guidance issued by the USPTO, projecting that it will be useful to examiners and practitioners. In the letter, the IPO also provides specific comments on the guidance, including warnings on examiner over-reliance and how the guidance could be further improved to aid patent applicants.
The IPO first addresses computer-implemented products and processes. The IPO gives credit to the guidance for a sufficient summary of the Bilski opinion and other relevant Supreme Court precedent. Moving right into practical applications, the IPO stresses the need for the PTO to follow the principles of compact prosecution and warns patent examiners not to overemphasize the patent-eligibility requirement of § 101 in patent application examination. Acting Associate Commissioner for Patent Examination Policy Robert W. Barr's July 27, 2010 Memorandum to the Patent Examining Corps (see Interim Guidance), is referenced as echoing this caution to examiners. Regarding the factors provided in the guidance, the IPO stresses the importance that examiners consider each claim in a patent application "as a whole," warning examiners not to apply the "abstract idea" factors to individual claim elements. Indeed, the IPO is wary that strict application of individual factors could render clearly non-abstract inventions being labeled as abstract, noting that historically examiners rely heavily on such factors. Turning to the recitation of a machine in a computer-implemented invention, the IPO finds that it is unclear as to what extent and how an inherent recitation of the machine or transformation is required. The IPO recommends that the PTO provide examples and case law of sufficient recitation, which should provide a clearer indication of what is meant by an inherent recitation of the machine or transformation.
Somewhat disappointingly, the IPO provides little commentary on the Interim Guidance regarding innovations in the life sciences. The IPO believes that biotechnology and other life science inventions should be accorded the same broad scope of § 101 as inventions in other fields. As with computer-implemented processes, the IPO requests that the PTO provide specific life science examples of transformations that render that claimed method patentable subject matter when part of a claimed method.
In the final section of the letter, the IPO provides an overview of the issues with the machine-or-transformation (MOT) test. The IPO notes a historical shift from a focus on what processes are ineligible for patent protection, to those that are eligible. The MOT test is provided as the principle example of this inclusionary trend. The IPO notes that the MOT test can be construed both too broadly and too narrowly, depending on the situation, to be compatible with the statutory exclusions of patentable subject matter, such as abstract ideas or laws of nature. On the issue of business methods, the IPO finds that they need no special treatment, and may be evaluated in the same general context as any other application area, which is whether the process describes an act on tangible property, or alternatively claims an act that results in the generation of tangible property. The IPO concludes with a discussion of past Supreme Court decisions and how they would have likely been decided under the MOT test, beginning with the 1852 case Leroy v. Tatham, up to the 2010 Bilski v. Kappos decision itself.
James DeGiulio has a doctorate in molecular biology and genetics from Northwestern University and is a graduate of Northwestern University School of Law. Dr. DeGiulio is a member of MBHB's 2010 associate class and he can be contacted at degiulio@mbhb.com.
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