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USPTO Issues Memo to the Patent Examining Corps

6/28/2010

On Monday, June 28, 2010, following the U.S. Supreme Court's decision in the case of Bilski v. Kappos, No. 08-964 (U.S. June 28, 2010), the U.S. Patent and Trademark Office (USPTO) issued a Memorandum to the Patent Examining Corps, giving patent examiners guidance on examining patent applications in view of the Court's decision.  Essentially, the USPTO will continue examining claims to a process using the "machine or transformation" test to determine whether the subject matter of the claim is eligible for a patent.

The USPTO acknowledged the Court's position that the "machine or transformation" test, developed by the Court of Appeals for the Federal Circuit, is not the sole test for patent eligibility of processes under 35 U.S.C. §101.  The USPTO also acknowledged that the Court indicated that business methods, at least in some circumstances, are eligible for patenting.

In guiding the examining corps in examining patent applications in view of the Bilski decision, the USPTO directs patent examiners to continue examining patent applications for compliance with §101 using existing guidance concerning the "machine or transformation" test as a tool for determining whether a claimed invention is a process under §101.  The USPTO's rationale for this approach is that the Court indicated that if a claimed method meets the "machine or transformation" test, the method likely is patent eligible, unless there is a clear indication that the method is directed to an abstract idea.   If the claimed invention does not meet the "machine or transformation" test, the examiner is to reject the claim under §101 and the burden shifts to the applicant to explain why the claimed method is not directed to an abstract idea.

The USPTO also indicates it is reviewing the Bilski decision and will be developing further guidance on patent subject matter eligibility.