USPTO issues guidance for patent subject matter eligibility after Bilski

Less than a month after the Bilski v. Kappos decision in which the U.S. Supreme Court held that business methods are not per se unpatentable, the USPTO has published a set of Interim Guidance for Determining Subject Matter Eligibility of Process Claims for patent applications in the post-Bilski world.

In the Guidance, which is directed to USPTO patent examiners but available for comment by the public at large, the USPTO cautions examiners to not typically rely on Section 101 of the Patent Act as the sole basis for rejecting a claim: 

Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient under the patent-eligibility requirement of 35 U.S.C. 101.  Thus, Office personnel should state all non-cumulative reasons and bases for rejecting claims in the first Office Action.

The Guidance lists several factors that should be considered when determining subject matter eligibility of a method claim.  Some of the factors include:

• Does the method involve, or is it executed, by a particular machine or apparatus?  If so, then does the machine impose meaningful limits on the claimed method steps?  Is the machine merely an object on which the method operates?  
• Does the method transform an article?  Is the article a particular article, or just a generic “thing”?  Does the transformation impose meaningful limits on the claimed method steps?
• Does the method involve application of a law of nature?
• Is a general concept involved in executing the claimed method?  Is the claim so sweeping that it would cover both known and unknown uses of the concept?

The Guidance makes it clear that Section 101 rejections cannot be mere conclusory statements:

[T] he examiner will reject the claim under section 101, providing clear rationale supporting the determination that an abstract idea has been claimed. . . . [T]he examiner should specifically point out the factors that are relied on in the determination.

As the Guidance is still interim, the USPTO seeks public comment on its content.  In particular, the USPTO is looking for comments in the following areas:

• The USPTO seeks examples of method claims that don’t satisfy the “machine-or-transformation” test but still represent patent-eligible subject matter.
• The USPTO seeks examples of method claims that do satisfy the “machine-or-transformation” test but nonetheless would not be patent-eligible.
• Are there any categories of patent applications that instruct how business should be conducted, such that those categories would be unpatentable?

The public comment period will be open through September 27, 2010.