Yesterday, the PTO published Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos. The Federal Register notice requests public comments on the Guidance by September 27. Specifically, the PTO requests comments on these questions:
1. What are examples of claims that do not meet the machine-or-transformation test but nevertheless remain patent-eligible because they do not recite an abstract idea?
2. What are examples of claims that meet the machine-or-transformation test but nevertheless are not patent-eligible because they recite an abstract idea?
3. The decision in Bilski suggested that it might be possible to ‘‘defin[e] a narrower category or class of patent applications that claim to instruct how business should be conducted,’’ such that the category itself would be unpatentable as ‘‘an attempt to patent abstract ideas.’’ Bilski slip op. at 12. Do any such ‘‘categories’’ exist? If so, how does the category itself represent an ‘‘attempt to patent abstract ideas?’’
The Guidance still relies heavily on the Federal Circuit’s machine-or-transformation test and seems to be skeptical that there are methods that would be patent eligible that do not meet the test.
To date, no court, presented with a subject matter eligibility issue, has ever ruled that a method claim that lacked a machine or a transformation was patent-eligible.
The Guidance suggests that claims must be considered as a whole and that patent eligibility under § 101 is only a threshold test. Patent claims must still be examined for compliance with §§ 102, 103, and 112. Examiners are admonished to state all non-cumulative reasons and bases for rejecting the claims in the first office action and should not treat an application solely on the basis of § 101 except in the most extreme cases.
Factors to Be Considered in an Abstract Idea Determination of a Method Claim
A. If the method involves or is executed on a particular machine, it is likely patent eligible.
(1) A more particular machine weighs more heavily toward patent eligibility than a general machine.
(2) If the machine implements the steps of the method, it is more likely eligible than if the machine is merely an object on which the method operates.
(3) If the machine’s involvement is mere extrasolution activity or a field-of-use limitation, the claim is likely not patent eligible.
B. If the method involves or results in transformation of a particular article, it is likely patent eligible.
(1) A more particular transformation weighs more heavily toward patent eligibility than a general transformation.
(2) A more particular article being transformed weighs more heavily toward patent eligibility than transformation of a general article.
(3) A more extensive change toward a different function or use weighs more toward eligibility than a mere change in location.
(4) Transformation of an object or substance weighs more toward eligibility than a contractual obligation or mental judgment.
(5) If the transformation involves mere extrasolution activity (e.g., data gathering) or a field-of-use limitation, the claim is likely not patent eligible.
C. A method involving application of a law of nature in the absence of a machine or transformation may be patent eligible.
(1) If the application is too general, this weighs against patent eligibility (e.g., the use of electromagnetism in transmitting signals at a distance).
(2) If the method involves subjective determinations, such as a way of thinking about a law of nature, it is likely not patent eligible.
(3) If the application of the law of nature involves mere extrasolution activity (e.g., data gathering) or a field-of-use limitation, the claim is likely not patent eligible.
D. If a general concept is involved in a method, it is likely drawn to an abstract idea.
(1) If the use of the concept would preempt use in other fields, it is likely an abstract idea.
(2) If the claim covers both known and unknown uses of the concept or can be performed with existing and later-developed apparatus, it is likely patent ineligible.
(3) If the claim is the mere statement of a problem and would cover all possible solutions, it is likely ineligible.
(4) If the claim has been implemented and if there is concrete evidence to support it, it is more likely patent eligible.
(5) If the method steps are observable and verifiable, the method is likely patent eligible.
The Guidance then provides a number of examples of general concepts.
Examiners are instructed to weigh all of the factors in considering the claim as a whole, and also to conduct a complete examination of the claim under the remaining patentability requirements.
When rejecting a claim under § 101, the examiner is to set forth a prima facie case. The examiner is to set forth the rationale and the factors considered to reach the conclusion that the method is drawn to an abstract idea. The applicant will then have the opportunity to respond to the factors as to why the method is not drawn to an abstract idea.
Although the PTO will continue to rely almost exclusively on the machine-or-transformation test, it does seem to be a bit more open to the idea that the examiner must make a prima facie rejection at the outset than it did in its memo immediately following the Supreme Court decision. In that memo, the PTO seemed to indicate that the burden was on the applicant to prove patent eligibility instead of the other way around.
I understand that the PTO wants to provide simple guidance to the examiners in making patent eligibility determinations. Examiners generally don’t like doing this as they find it much easier to apply prior art to patent claims. The PTO seems be unnecessarily complicating this issue. It shouldn’t really involve this many factors to determine whether a claim covers an abstract idea. And, of course, §§ 102, 103, and 112 should provide more help to patentability determinations than restrictions under § 101.