08 July 2010

The USPTO's Approach to Bilski

On the very same day the US Supreme Court handed down its long awaited Bilski v. Kappos opinion, the USPTO issued a memorandum for guidance of Patent Examiners, authored by Robert W. Bahr, Acting Associate Commissioner for Patent Examination Policy, according to which:
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 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. [In this case,] the applicant then has the opportunity to explain why the claimed method is not drawn to an abstract idea.
This interim guidance for patent examiners, however, sounds as reversal of the burden of proof to me, since it means that, even though the Supreme Court ruled that the machine or transformation test is not the only possible test to determine whether or not a method represents eligible subject matter, the USPTO will still reject a claim if it does not meet the requirements of the machine or transformation test, while the applicant then has the burdon to explain to the USPTO, why his claim is not an abstract idea.

In fact, Peter Zura noted on the 271 Patent Blog that "this approach to examination appears to be contrary to Oetiker which held that 'the examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.' In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (see MPEP 2106(IV)(D)).

Matt Osenga added on his Inventivestep Blog, that, in the same context, Hal Wegner noted that the above-sketched section of the USPTO's memo turns patent examination on its head and places the burden on the applicant to prove that his claims are directed to patentable subject matter:
Thus, contrary to the Supreme Court’s opinion, the USPTO 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.
Mr Wegner apparently also speculated that the discussion about eligible subject matter simply is the USPTO’s way of avoiding examination on the merits, much in line with AIPLA's amicus curiae brief in Bilski and Kristen Osenga's view that the genesis for the preoccupation with § 101 patent-eligibility had much to do with avoiding a merits examination. (see Ants, Elephant Guns, and Statutory Subject Matter, 39 Ariz. St. L.J. 1087 (2007)).

Further guidance may be on the way, since the Patently-O Blog already identified the first Bilski test cases, namel "Research Corporation Technologies v. Microsoft" (Fed. Cir. 2010), " In Re Bonnstetter" (Fed. Cir. 2010) and "Accenture Global Servs. GmbH v. Guidewire Software" (D. Del. 2010).