20 July 2010

Further Bilski Guidance from the USPTO

In my earlier posting regarding the USPTO's approach to the recent Bilski opinion of the US Supreme Court, I found, like others (see here and here), that the interim guidance for patent examiners, in which USPTO examiners were adviced that "if  a claimed method does not meet the machine-or-transformation test, the examiner should reject the claim under section 101" unless the applicant manages "to explain why the claimed method is not related to an abstract idea", sounds as reversal of the burden of proof.

Now, there is a report on Brian Flecher's Patentability blog, according to which Robert L. Stoll, Commissioner for Patents at the USPTO, told at the NAPP 2010 Annual Meeting that updated, more detailed interim guidance was in the review and approval process and that Mr Stoll hopes to have it available for use within the next few weeks. 
Regarding the reversal-of-burden-of-proof issue, he apparently emphasized that 
it was never the intent of the current interim guidance to shift the burden of proving patentability to the applicant and that examiners still have the burden of presenting a prima facie case of unpatentability.
Mr Stoll added that "the USPTO would be soliciting public comments and closely monitoring court decisions in an attempt to create and maintain up-to-date examination guidance regarding patentable subject matter".