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Patent Office Releases Interim Bilski Guidelines


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: July 27, 2010 @ 11:21 am
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This morning the United States Patent and Trademark Office published Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos. The Interim Bilski Guidance is effective July 27, 2010, and applies to all applications filed before, on or after the effective date. Most noteworthy is that the Patent Office is encouraging examiners to issue 101 rejection in only “extreme cases” and allow patentability to be decided by sections 102, 103 and 112.

These interim guidelines build upon the memo sent to the examining corps the day the Supreme Court issued its decision in Bilski v. Kappos, and is intended for use by Office personnel when determining subject matter eligibility under 35 U.S.C. 101. According to the Federal Register Notice, this guidance supersedes previous guidance on subject matter eligibility that conflicts with the Interim Bilski Guidance.

Significantly, the guidelines explain:

Therefore, examiners should avoid focusing on issues of patent eligibility under Sec. 101 to the detriment of considering an application for compliance with the requirements of Sec. Sec. 102, 103, and 112, and should avoid treating an application solely on the basis of patent eligibility under Sec. 101 except in the most extreme cases.

This should be music to the ears of the patent bar and applicants who were previously stopped dead in their tracks by a seemingly insurmountable 101 rejection.

Additionally, the Federal Register Notice encourages patent examiners to not merely make naked patentable subject matter rejections, but rather to proceed with examination and provide all bases for rejecting claims in the First Office Action. To this end the Notice says:

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 with respect to 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 Patent Office explains that it is their understanding of the Supreme Court decision in Bilski that the Court intended to “underscored that the text of Sec. 101 is expansive… [and] business methods are not “categorically outside of Sec. 101′s scope…”

The Notice also reminds examiners are reminded that Sec. 101 is not the sole tool for determining patentability where a claim encompasses an abstract idea, and specifically states that “Section 101 is merely a coarse filter and thus a determination of eligibility under Sec. 101 is only a threshold question for patentability.” This should hardly be considered new, or refreshing, but the way that the Patent Office and many patent examiners have interpreted business methods and computer implemented methods over the last few years suggests that this change in examiner guidance could be monumental. It really ought to not be monumental because this guidance merely directs the patent examiners accurately on the law, and patent eligibility under Section 101 has always been merely a threshold question. Patent examiners and the Patent Office for years have not treated it that way, largely ignoring basic principles of patent law. This guidance should put an end to that and there is real reason for optimism.

The Federal Register Notice also includes something of a worksheet or checklist for patent examiners. It provides a list of factors that should be considered when analyzing a claim for the purpose of evaluating whether the method in the claim is directed to an abstract idea, but specifically points out that not every factor will be relevant in every situation. Furthermore, no factor is to be considered conclusive by itself, and the weight accorded each factor will vary based upon the facts of the application. Of course, the Notice also explains that the factors are not intended to be exclusive or exhaustive.

Weighting Toward Patent Eligibility

In the situation where there is a recitation of a machine or transformation that is either express or implied, there should be a weighing toward patent eligibility when:

  • Machine or transformation is particular.
  • Machine or transformation meaningfully limits the execution of the steps.
  • Machine implements the claimed steps.
  • The article being transformed is particular.
  • The article undergoes a change in state or thing (e.g., objectively different function or use).
  • The article being transformed is an object or substance.

In the situation where the claim is directed toward applying a law of nature, there should be a weighing toward patent eligibility where:

  • Law of nature is practically applied.
  • The application of the law of nature meaningfully limits
  • the execution of the steps.

In the situation where the claim claim is more than a mere statement of a concept, there should be a weighing toward patent eligibility where:

  • 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.

Weighing Against Patent Eligibility

In the situation where there is no recitation of a machine or transformation that is either express or inherent, the factors listed and identified as weighing against patent eligibility are:

  • Involvement of machine, or transformation, with the steps is merely nominally, insignificantly, or tangentially related to the performance of the steps, e.g., data gathering, or merely recites a field in which the method is intended to be applied.
  • Machine is generically recited such that it covers any machine capable of performing the claimed step(s).
  • Machine is merely an object on which the method operates.
  • Transformation involves only a change in position or location of article.
  • Article’ is merely a general concept.

In the situation where the claim is not directed to an application of a law of nature, the factors listed and identified as weighing against patent eligibility are:

  • The claim would monopolize a natural force or patent a scientific fact; e.g., by claiming every mode of producing an effect of that law of nature.
  • Law of nature is applied in a merely subjective determination.
  • Law of nature is merely nominally, insignificantly, or tangentially related to the performance of the steps.

In the situation where the claim is a mere statement of a general concept, the factors listed and identified as weighing against patent eligibility are:

  • Use of the concept, as expressed in the method, would effectively grant a monopoly over the concept.
  • Both known and unknown uses of the concept are covered, and can be performed through any existing or future-devised machinery, or even without any apparatus.
  • The claim only states a problem to be solved.
  • The general concept is disembodied.
  • The mechanism(s) by which the steps are implemented is subjective or imperceptible.

The Federal Register Notice also provides these notes to elaborate.  For applicants and members of the bar the examples “general concepts” is most relevant, with the other notes largely being aimed at examiners, including form paragraphs and the like.  Examples of general concepts include, but are not limited, to:

  • Basic economic practices or theories (e.g., hedging, insurance, financial transactions, marketing);
  • Basic legal theories (e.g., contracts, dispute resolution, rules of law);
  • Mathematical concepts (e.g., algorithms, spatial relationships, geometry);
  • Mental activity (e.g., forming a judgment, observation, evaluation, or opinion);
  • Interpersonal interactions or relationships (e.g., conversing, dating);
  • Teaching concepts (e.g., memorization, repetition);
  • Human behavior (e.g., exercising, wearing clothing, following rules or instructions);
  • Instructing how business should be conducted.’

It seems pretty clear that the USPTO wants to force examiners away from utilizing patentable subject matter rejections under Section 101 and to move examination along and let applications rise or fall on patentability under sections 102, 103, and 112.  This coupled with the specific guidance from the checklist and the instructions to issue 101 rejections only in “extreme cases” should give patent attorneys some meaningful ammunition to attack lingering 101 rejections and to overcome any new 101 rejections.

The Patent Office is looking for the thoughts and ideas of the general public relating to these interim guidelines.  While there will be no public hearing, comments can be submitted at any time up to September 27, 2010.  While any written comments can be provided the Patent Office is specifically looking for input on the following 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?”
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Posted in: Bilski, Business Methods, Gene Quinn, IP News, IPWatchdog.com Articles, Patentability, Patents, USPTO

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

16 comments
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  1. Nice heads up, Gene. Just FYI the link to the FR notice is bad.

  2. Phil-

    Thanks for the heads up. I fixed the link to the FR notice, so it should now be correct. The appropriate link is:

    http://edocket.access.gpo.gov/2010/pdf/2010-18424.pdf

    -Gene

  3. Gene,

    Definitely “music” to my ears, if the PTO adheres to these guidelines.

  4. I don’t see how these guidelines are going to help applicants or examiners in the field of computer implemented business methods. If I claim a computer programmed to do steps A, B, and C, do I have a “Machine (that) implements the claimed steps.” (weighs towards eligibility) or a “Machine (that) is merely an object on which the method operates.” (weighs against eligibility)?

  5. @Mark Nowotarski

    Therefore, examiners should avoid focusing on issues of patent eligibility under Sec. 101 to the detriment of considering an application for compliance with the requirements of Sec. Sec. 102, 103, and 112, and should avoid treating an application solely on the basis of patent eligibility under Sec. 101 except in the most extreme cases.

    In my opinion this means for examiners that the focus is taken away from 101, only to saving much of the examiners time with issues over patent eligibility with applicants ! I don’t believe the PTO will have this as a lose end to bite it later on because it means more patents get granted that shouldn’t.

  6. I don’t believe the PTO will have this as a lose end to bite it later on because it means more patents get granted that shouldn’t.

    I’m not sure I follow.

  7. Gee, I don’t know. Aren’t the Supreme Court and the patent office both on the wrong track? http://www.patenthink.com

  8. I had a conversation with an examiner yesterday over a 101 rejectionm made a few months ago. The claim is a method claim that calls for the use of an apparatus that is worn by a person in order to help the person perform an action better than they could if they did not wear the apparatus. The claim reads something like this (this is a non-published case so we need to disguise the facts):
    A method of performing task X by a person having two hands comprising wearing a Y that includes A, gripping A with one of the hands, and performing task X while releasing the grip on A so that X is performed better than if A had not been gripped.

    The examiner says there are guidelines that REQUIRE him/her to find that X is not a machine, so the claim does not meet the MOT test. I don’t see anything in these latest guidelines addressing what a machine is. Was there something before; if so did it call for what he examiner says and is it still operative after yestereday’s guidelines?

  9. American Cowboy

    Let me guess … it is a golf training tool.

    Tell the Examiner he hasn’t established that the claimed invention is directed toward an Abstract idea, and then prepare to go to appeal.

    Trying to reason with most examiners is a lost cause, particularly when it comes to 101. They just do what they are told, and if they don’t understand, they just make up sh_t. This is the source of some extremely poorly reasoned 101 rejections I’ve seen in the past.

    If you’ve already addressed any 102/103 issues and this goes to the appeal conference, my guess is that the Examiner’s primary/SPE will go “that’s not what I meant about not being a machine” … just allow it.

  10. Cowboy,

    Zeroth, if the rejection was a few months ago, the guidelines he’s talking about aren’t the ones the PTO released yesterday.

    First, if you didn’t file a non-publication request, please tell me how to get examiners to reject an application a few months before it is published.

    Second, you don’t want that claim anyway. You want to claim a Y comprising an A. Unless you plan to sue all your potential customers for using your competitor’s device, and then hope they all come shop at your place once you get that injunction against them.

    Third, why should X be a machine? X is a task, and a prior art task at that. Your Y comprising the A is the machine, your method seems tied to it, and hopefully you claimed Y and A with specific enough wording (e.g. not means-plus-function) that the examiner should consider it non-abstract.

  11. Ianae, you are right, x is not a machine.
    Typo on my part — I should have said that the examiner insists that Y is not a machine.

    By the way, I do have other claims to the Y apparatus — no 101 issues with them, just rejections that require incredible claim constructions to support.

    Speaking of that; I am seeing more and more examiner statements of claim constructions that are, frankly, absurd and seem to have been conjured up solely to be able to reject, reject, reject. Please tell me I am not alone.

  12. “This coupled with the specific guidance from the checklist and the instructions to issue 101 rejections only in “extreme cases” should give patent attorneys some meaningful ammunition…”

    I’m not so sure that’s what the Guidelines stated. It states, “examiners…should avoid treating an application solely on the basis of patent eligibility under Sec. 101 except in the most extreme cases.” I think they mean that the examiner should not just issue a 101 rejection without examining for 112, 102/103 (I have a number of actions right now that only have a 101 rejection – i think the examiners were just being lazy)

  13. Hold on their cowboy.

    “A” is being transformed from being in the hand-gripped state to being in the ungripped state.

    It sounds like your Examiner is being transformed from being in the semi-rational state to being in the … (well you fill in whatever exuberant word comes to mind in the blank) .

  14. @Mark Nowotarski

    I don’t believe the PTO will have this as a lose end to bite it later on because it means more patents get granted that shouldn’t.

    I’m not sure I follow.

    The meaning…

    Therefore, examiners should avoid focusing on issues of patent eligibility under Sec. 101 …

    it is not a loose end (not lose… sorry); loose end I mean, a door left open too wide. The door to eligibility because 101 would be in some way, be out of the way ?. Rather, I feel it addresses a time problem at the PTO, time examiners spend too much of with applications on mentioned issues. Decisions made can get tied up with eligibility issues that ends with as I said, more patents get granted that shouldn’t.. So, I see the PTO will gain time to spend on and focus on patent applications, as they should !… before they are granted.

  15. @ patent leather… you say you have a number of actions with only 101 rejections.

    I strongly suggest that you call the SPE and suggest to him/her that you want to talk to the Director about this. The Examiner will be forced to withdraw the previous office action. It sounds like an examiner is slacking off to get counts, probably to cash in unworked hours for maximum overtime.

  16. “It seems pretty clear that the USPTO wants to force examiners away from utilizing patentable subject matter rejections under Section 101 and to move examination along and let applications rise or fall on patentability under sections 102, 103, and 112. This coupled with the specific guidance from the checklist and the instructions to issue 101 rejections only in “extreme cases” should give patent attorneys some meaningful ammunition to attack lingering 101 rejections and to overcome any new 101 rejections.”

    I agree with ‘patent leather’ at comment 12, the “Guidelines,” i.e., “Interim Guidance for Determining Subject Matter Eligibility for Process Claims…” do not say what you think it says.

    There is only one place in the Guidelines where “extreme cases” is mentioned and that paragraph says the following,

    “Therefore, examiners should avoid focusing on issues of patent-eligibility under 101 to the detriment of considering an application for compliance with the requirements of 102, 103, and 112, and should avoid treating an application solely on the basis of patent-eligibility under 101 except in the most extreme cases.”

    The Guidelines nowhere says to issue 101 rejections only in “extreme cases,” but instead, says that in extreme cases (and I think it means only in really extreme cases), I can and should issue 101 rejections by themselves, without any 102, 103, and/or 112 rejections.

    In most cases the Guidelines expects me to first reject under 101, where appropriate, and then to proceed with 102, 103, and/or 112′s as necessary.

    It is a total misreading of the Guidelines to assert that they say to issue 101 rejections only in “extreme cases”.