This week the USPTO issued Interim Examination Instructions to its patent examining corps for evaluating subject matter eligibility under 35 U.S.C. §101 while the Supreme Court’s review in Bilski v. Kappos is pending. The Instructions include a flowchart that examiners are encouraged to use for evaluating patent-eligibility of process claims.
The Instructions apply the “machine or transformation” test of the Federal Circuit’s In re Bilski decision in a manner that requires the machines to both (i) impose a meaningful limit on the claim’s scope, and (ii) involve more than insignificant extra-solution activity. Similarly, if there is no machine, but instead transformation of an article, the Instructions require that the transformation must both (i) impose a meaningful limit on the claim’s scope, and (ii) involve more than insignificant extra-solution activity.
For non-process claims (i.e., claims directed to machines, articles of manufacture, or compositions of matter), the Instructions ask whether the claim recites an abstract idea, law of nature, or natural phenomenon. If so, the Instructions indicate that the claim is patentable only if (i) the claim as a whole is directed to a practical application of the idea, and (ii) the claim does not cover substantially all practical applications.
The Instructions state that they do not have the full force and effect of law, and that a perceived failure of an examiner to follow the Instructions is neither appealable nor petitionable.
Dennis Crouch has provide additional analysis of the Interim Examination Instructions on his excellent Patently-O website. Hat tip to Patently-O for first reporting the USPTO’s publication of the new Instructions.