Hopes of What's Considered To Be Patentable Subject Matter. USPTO Releases Interim Guidelines

By Rick Michaud
In June of this year, the Supreme Court of the United States handed down the ruling in the case of Bilski v. Kapos, which as we all hoped, would have provided a clear definition, or test, of what is considered to be patentable subject matter.

Unfortunately, the Bilski decision provided little guidance.

The Supreme Court's ruling held that the previous test used by the United States Patent and Trademark Office (USPTO) (i.e., the Machine or Transformation Test) was not the sole test for patent eligibility under 35 U.S.C. 101, but that it was a useful and important clue or investigative tool.

Furthermore, the Bilski court stated that 35 USC 273(b)(1) acknowledges that there are business method patents and that section 273 clarifies the understanding that a business method is simply one kind of "method" that is, at least in some circumstances, eligible for patenting under 35 U.S.C. 101.

Since the Supreme Court's ruling provided no concrete test, the USPTO, on July 27th, released a set of interim guidelines for examination of the section 101 eligibility of method claims. The interim guidelines provide factors that an examiner should consider when determining whether a claim is directed to patent-eligible subject matter under 35 U.S.C. 101.

Specifically, the interim guidelines provide both a list of factors that weigh in favor of patent eligibility and a list of factors that weigh against patent eligibility.

Factors Weighing Toward Eligibility

* Recitation of a machine or transformation (either express or inherent).
o Machine or transformation is particular.
o Machine or transformation meaningfully limits the execution of the steps.
o Machine implements the claimed steps.
o The article being transformed is particular.
o The article undergoes a change in state or thing (e.g., objectively different function or use).
o The article being transformed is an object or substance.
* The claim is directed toward applying a law of nature.
o Law of nature is practically applied.
o The application of the law of nature meaningfully limits the execution of the steps.
* The claim is more than a mere statement of a concept.

The claim describes a particular solution to a problem to be solved.The claim implements a concept in some tangible way., The performance of the steps is observable and verifiable.,

The first factor that the USPTO lists, which would appear to be the most important factor, is the "Recitation of a machine or transformation". Clearly, the USPTO is still heavily relying on the Machine or Transformation test as an indicator to determine patent eligibility.

The other factors that weigh in favor of patent eligibility, besides satisfying the criteria of the Machine or Transformation Test, provide evidence that an abstract idea has been practically applied.

Furthermore, the factors provided by the USPTO are to be considered when analyzing a claim as a whole to evaluate whether a method claim is directed to an abstract idea.

So, let's look at two examples of claim language that are part of a method claim, the first one being a step of "providing a computer;" and the second being "determining, via a computer, an outcome;".

Both examples recite a machine (i.e., the computer) but only one passes the Machine or Transformation Test.

As listed above, one of the factors weighing toward eligibility is the concept that a "[m]achine implements the claimed steps". While, in my experience, this has always been assumed to be part of the test, the USPTO has clearly highlighted that the mere mention of a machine in claims may not cause the claims to pass the Machine or Transformation Test.

One of the factors weighing against eligibility is that the "[m]achine is merely an object on which the method operates." So, if the machine is merely mentioned and is not described in such a way that it implements the claimed steps, the claim would fail the Machine or Transformation Test and will not be considered patentable subject matter.

Referring back to the above examples, stating that "a computer is provided" does not disclose that the computer is actually doing the providing, as a human may have provided the computer. Therefore, this claim would not pass the Machine or Transformation Test.

In the example of "determining, via a computer, an outcome;", the computer is implementing the determining step. So, in this case the claim would pass the Machine or Transformation Test.

While I have not listed the factors that weigh against eligibility in this article, as there are many, there is one factor that is worth noting, and that is the very first factor that is listed (and the only factor bolded in the list).

The very first factor listed as weighing against eligibility is "No recitation of a machine or transformation (either express or inherent)". This further highlights the importance that the USPTO still places on the Machine or Transformation Test.

Clearly, while the machine and transformation is merely "a useful and important clue or investigative tool" it still appears to be the most important clue.

Richard Michaud is a founding member and managing partner of an international intellectual property law firm Michaud-Kinney Group in Connecticut. Michaud-Kinney specializes in all aspects of intellectual property law including foreign and domestic patent preparation, prosecution and litigation, trademark and copyright preparation, prosecution and litigation as well as in negotiating and drafting intellectual