The June 28 Bilski ruling upheld the Federal Circuit’s determination that Bernard Bilski’s and Rand Warsaw’s invention was not patent eligible, but struck down its assertion that the so-called machine-or-transformation test should be the sole test for determining patent eligibility.
In light of the ruling, 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 invention does not meet the test, it should be rejected, unless it clearly does not claim an abstract idea.
Some felt those guidelines were inadequate and put too much emphasis on the machine-or-transformation test in light of the Supreme Court’s finding that it should not be the sole test.
This week, the Office expanded upon that memo. While the updated guidance still uses the machine-or-transformation test as the key tool for determining patent subject matter eligibility, it describes in more detail the specific factors to be considered in light of the most recent Bilski ruling.
The latest guidance advises examiners to consider whether or not the claim as a whole includes recitation of a particular machine, is directed toward applying a law of nature or is more than a mere statement of a general concept.
Some examples of general concepts provided by the Office include: basic economic practices, such as hedging; interpersonal interactions, such as conversing or dating; and human behaviour, such as exercising.
This could present problems for patents geared toward online dating or social networking sites, said Paul Craane of Marshall Gerstein & Borun.
Craane said that examiners will now be looking for inventions that fall under the examples cited in the guidance, which also includes financial transactions. “That not only includes patents on types of securities and commodities trading, but also clean and green technology patents on methods of carbon credit trading,” he added.
The guidelines are open for public comment until September 27. The Office is specifically seeking examples of claims that might not meet the machine-or-transformation test but also do not recite abstract ideas or claims that do meet the test and are still abstract.
If such claims exist, the guidance would need to be revised.
Craane, who was publicly sceptical of the Office’s initial guidance, said that the latest version is “an improvement” overall.
“The Office is much closer to the spirit and the letter of Bilski with this guidance,” said Craane. He added: “The Supreme Court did say that the machine-or-transformation test is an important clue, so I can see why it’s being used as a fulcrum.”
However, Craane expressed some reservations about the factors relating to whether an invention applies a law of nature or is a general concept.
“Whether or not something applies a law of nature and whether or not it is abstract are two separate exceptions [to Section 101],” said Craane. He added that he wasn’t sure of the basis for the general concept factor, and that it seems like a “catch-all” category.
But Craane said that, although the guidance maintains a “healthy scepticism” suggesting that if an invention does not meet the machine-or-transformation test “you’re not going to get a patent”, it is still a “step forward”.
The USPTO told Managing IP that it cannot commit to a specific date for issuing the final guidance, but “we would hope to do this within a few months of the end of the comment period” on September 27.
The Office further noted that one of the several Federal Circuit cases set to further clarify the Bilski ruling could cause it to have to revise the guidance again, prolonging the process.
Comments on the new guidelines should be sent to Bilski_Guidance@uspto.gov by September 27.
