Following the 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. For now, the USPTO will continue to use the Federal Circuit’s machine-or-transformation test as the benchmark for patentability determinations under Section 101.
The pertinent part of the memo reads:
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 meets the machine-or-transformation test, the method is likely patent-eligible under section 101 unless there is a clear indication that the method is directed to an abstract idea. 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. If a claim is rejected under section 101 on the basis that it is drawn to an abstract idea, the applicant then has the opportunity to explain why the claimed method is not drawn to an abstract idea.
The USPTO is reviewing the decision in Bilski and will be developing further guidance on patent subject matter eligibility under 35 U.S.C. § 10 1.
To read the Bilski memo to the Patent Examining Corps, click here.