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In response to the U.S. Supreme Court’s decision in Bilski v. Kappos (see our post here), the USPTO issued a memorandum to provide interim guidance to the Patent Examining Corps (see our post here).  Some commentators (here) have criticized the new policy because the interim guidelines state if there is no “clear indication” that the invention is something other than an abstract idea, the examiners should reject the application. At this point, applicants have the burden to explain why the invention is not an abstract idea.  This approach to examination appears to be contrary to Oetiker, where the Federal Circuit 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)).

Today, at the National Association of Patent Practitioners (NAPP) 2010 Annual Meeting in Alexandria, Virginia, Robert L. Stoll, Commissioner for Patents at the USPTO, told the audience that updated, more detailed interim guidance was in the review and approval process and that he hoped to have it available for use within the next few weeks.  He also 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.

Going forward, Stoll said 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.

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