Many have already publicized the PTO’s same-day memo to patent examiners regarding how to examine applications in the wake of the Supreme Court’s opinion in Bilski v. Kappos.
On the one hand, it is interesting to note that the Supreme Court basically followed the government’s lead in rendering a very narrow decision. The PTO was also proactive in providing examiners preliminary guidance in the form of the memo.
Hal Wegner provides a different perspective.
The memo came from Robert Bahr, Acting Associate Commissioner for Patent Examination Policy. The memo recaps the Supreme Court’s opinion, noting that there are four categories of statutory subject matter under § 101, that the Court noted that § 101 is broad but not limitless, that Bilski sought to patent abstract ideas, that the machine-or-transformation test was cited as helpful but not the sole test for patent eligibility, that business methods may sometimes be patentable subject matter, and that claims must meet the other requirements for patentability as well (novelty, utility, non-obviousness, etc.).
Wegner notes, however, the the next section of the memo turns patent examination on its head and places the burden on the applicant to prove that its claims are directed to patentable subject matter.
Examiners should continue to examine patent applications for compliance with section 101 using the existing guidance concerning the machine-or-transformation test as a tool for determining whether the claimed invention is a process under section 101. If a claimed method meets the machine-or-transformation test, the method is likely patent-eligible under section 101 unless there is a clear indication that the method is directed to an abstract idea. If a claimed method does not meet the machine-or-transformation test, the examiner should reject the claim under section 101 unless there is a clear indication that the method is not directed to an abstract idea. If a claim is rejected under section 101 on the basis that it is drawn to an abstract idea, the applicant then has the opportunity to explain why the claimed method is not drawn to an abstract idea.
Thus, contrary to the Supreme Court’s opinion, the PTO will continue to presume that claims that don’t meet the machine-or-transformation test are patent ineligible until the applicant meets the burden of proving that the claim is not directed to an abstract idea. I have no idea where Bahr gets that from the Supreme Court opinion.
Wegner also points out that the patent statute and judicial precedent suggest that the burden for rejecting claims in patent applications rests on the examiner. He also characterizes all this discuss about eligible subject matter as simply the PTO’s way of avoiding examination on the merits. This sounds like AIPLA’s amicus brief in Bilski and Kristen Osenga, Ants, Elephant Guns, and Statutory Subject Matter, 39 ARIZONA STATE LAW JOURNAL 1087 (Winter 2007).