Managing Intellectual Property

USPTO hits the ground running

01 July 2010

by Eileen McDermott, New York

Immediately after the Bilski decision was released at 10.45am on June 28, USPTO commissioner for patents Bob Stoll gathered his team together to discuss their next steps. "We didn't want folks to panic about what they should do," Stoll told Managing IP. "We wanted to be sure people weren't freaking out about applications with Section 101 questions."

By 3pm, Stoll and Robert Bahr, the Office's acting associate commissioner for patent examination policy, were in a meeting with USPTO director David Kappos to discuss the language of the interim guidance circulated to examiners Monday afternoon. That memo instructed examiners to continue using the existing guidance relating to the machine-or-transformation test.

The existing guidelines were developed in response to the Supreme Court's decision in June 2009 to hear the Bilski case. They were based on the Federal Circuit's ruling setting out the machine-or-transformation test as the sole test for patent eligibility. "If a claimed method meets the machine-or-transformation test it is likely patent-eligible under section 101 unless there is a clear indication that the method is directed to an abstract idea," said the memo. It added that, if an invention does not meet the test, it should be rejected unless it clearly does not claim an abstract idea.

The Office is already working on more detailed guidelines, but does not expect its fundamental approach to change. "It may be that we recognise there are other tests [besides the machine-or-transformation test] that we can apply in addition to what we have done so far," said Stoll. He added: "In the long term there will be more explicit, specific guidelines, but it's not likely that we'll read the case differently."

Most view the memo as a fair way to proceed for now. The long-term guidelines will probably be subject to stakeholder input once developed. "I would fully expect to completely vet the ideas with the patent community first," said Stoll.

The Office was able to move quickly to release the interim guidance because it has had a team ready to go on Bilski for some months now. Stoll's and Bahr's teams will confer with the solicitor's office and the Board of Patent Appeals and Interferences to develop the more detailed, draft guidelines before delivering them to Kappos for review.

Neither Stoll nor Bahr expect the change in examination policy to significantly affect patent filings or pendency. "I think we took a fairly conservative approach for now," said Stoll.

Industry views

Marshall Phelps, former head of IP at IBM and Microsoft: "My concern was that the pressure to do something about business methods would bleed over into software. I view it as a big sigh of relief on that point. The Court was smart enough to realise that they can't predict where technology is going to go. I think we're all going to live to see another day."

Jim Greenwood, Biotechnology Industry Organization: "The Court was clearly conscious of the potential negative and unforeseeable consequences of a broad and sweeping decision. This ruling specifically states that the 'machine-or-transformation test is not the sole test for patent eligibility' and recognised that the lower court's ruling could have created uncertainty in fields such as advanced diagnostic medicine techniques."

Daniel Ravicher, Public Patent Foundation: "For over a decade we've seen patents on ideas, thoughts, and even genes. Today the Court missed an opportunity to send a strong signal that ideas are not patentable subject matter. The Court's rejection of Bilski's patent application got rid of a symptom of the disease, but failed to treat the real cause by reconfirming that thought and thought processes are not patentable."

Brian O'Shaughnessy, Licensing Executives Society (USA and Canada): "Overall, we believe the Supreme Court's decision represents an important step towards maintaining a balanced, effective patent system that promotes innovation and opportunity for both inventors and consumers. By excluding abstract ideas from patent protection, while maintaining the patentability of real-world inventions in all technical fields, this decision will enhance companies' ability to work together through licensing to offer new products and services."

Rob Tiller, Red Hat: "For those troubled by the problems surrounding software patents, the opinion will be disappointing, because it does not resolve those problems. But it would be a mistake to view the opinion as a victory for the proponents of expanding software patents ... The rationale for invalidating the Bilski patent is one that could easily be applied to void some software patents. The Court found the business method patent at issue was an unpatentable abstract idea. It reaffirmed the validity of its prior case law rejecting attempts to patent abstract ideas, including mathematical algorithms. As Ben Klemens has explained ..software is properly viewed as consisting entirely of algorithms."

Todd Dickinson, AIPLA: "We are generally pleased that the Court's majority confirmed that broad patent protection is critical to innovation and economic growth. They recognised that the patentability of next generation technology should not be judged by a last century view of the law. This was the position that AIPLA urged in its amicus brief and we are gratified that the Court adopted much of our reasoning."

Brian Kahin, Computer and Communications Industry Association: "By concluding that the hedging technique was no more than an abstract idea, the Court breathes new life into the abstract idea exclusion, but does not offer new guidance on just what that is. The opinion is fairly clear about what it isn't doing. It is not clear about what it is doing. By declining to give fixed meaning to terms like 'process' and 'business method', the Court has recreated at a systemic level the problem of fuzzy and uncertain boundaries that have plagued patents in abstract areas and made it both risky and costly to assert, avoid or defend against patents."


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