The following guest post comes from Kenneth Nigon, Practice Manager for the Patent Preparation and Prosecution Group at RatnerPrestia and PLI Faculty member.
On Tuesday, July 27, the USPTO published its Interim Guidance for Determining Subject Matter Eligibility for Process Claims in view of Bilski v. Kappos (“Interim Bilski Guidance”). This Guidance supplements the Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101 (“Interim Instructions”), published on August 24, 2009 and the memorandum to the Patent Examining Corps on the Supreme Court Decision in Bilski v Kappos published on June 28, 2010 (“Bilski Memorandum”).
The Bilski Memorandum instructs the examiners to reject method claims that do not meet the requirements of the Machine or Transformation (MoT) test formulated by the Federal Circuit in In re Bilski 545 F.3d 943 (Fed. Cir. 2008). The Interim Bilski Guidance modifies these instructions to require examiners to apply a balancing test which weighs factors both in favor of and opposed to patent eligibility and directs examiners to consider all requirements for patentability in the interest of compact prosecution.
The factors weighing in favor of eligibility of a claim include that it:
- passes the MoT test,
- is directed toward the application of a law of nature and
- is more than a mere statement of a concept.
The factors weighing against eligibility mirror the eligibility factors and include that the claim
- fails the MoT test,
- is not directed to the application of a law of nature and
- is a mere statement of a general concept.
While the Interim Bilski Guidance gives several examples of processes that are not patent-eligible under these tests, it does not give any examples of a process that are eligible.
Regarding compact prosecution, the Interim Bilski Guidance memo emphasizes that,
“examiners should avoid focusing on issues of patent-eligibility under § 101 to the detriment of considering an application for compliance with the requirements of §§ 102, 103 and 112 and should avoid treating an application solely on the basis of patent-eligibility under § 101 except in the most extreme cases.”
In view of several recent cases from the Federal Circuit and the Board of Patent Appeals and Interferences (BPAI), this instruction appears to be an attempt by the USPTO to shift the examination of claims for patent-eligibility away from § 101 in favor of §§ 102, 103 and 112. In particular, many claims that are not patent eligible under the balancing test of the Interim Bilski Guidance may be rejected as lacking sufficient written description, as set forth in Ariad v. Lilly 598 F.3d 1336 (Fed. Cir. 2010), or as being indefinite under the test provided in Ex parte Miazaki 89 USPQ2d 1207 (BPAI 2008). Furthermore, many claims involving human activity or the computerization of human activity may be rejected as being anticipated or obvious.
In any event, an applicant who successfully argues a claim or amends it to overcome these rejections will likely also overcome the rejection under § 101. In this regard, the Interim Guidance may be seen as a positive development, if it transforms the uncertain determination of whether a claim is patent eligible under § 101 into a more manageable determination of whether the claim satisfies the requirements of §§ 102, 103 and 112.
Tags: Ariad v. Lilly, Bilski, BPAI, Federal Circuit, Interim Bilski Guidance, Kenneth Nigon, machine-or-transformation test, RatnerPrestia, Subject Matter Eligibility, USPTO
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