Eileen McDermott, New York, Peter Ollier, Hong Kong, and Simon Crompton, London
The effects of the US Supreme Court's decision in Bilski v Kappos began to be seen around the world last month. It was cited for the first time in a related case and new guidance from the USPTO explained how the US Office would apply the new rules.
The ruling on June 28 upheld the Federal Circuit's determination that Bernard Bilski's and Rand Warsaw's invention was not patent eligible, but struck down the Court's assertion that the so-called machine-or-transformation test should be the sole test for determining patent eligibility.
A USPTO task force immediately released interim guidance to examiners instructing them to continue using the machine-or-transformation test as a "tool for determining whether the invention is a claimed process under Section 101 [the section of US patent law that pertains to patent eligibility]". It added that if an...