On July 27, 2010, Robert W. Bahr, the Acting Associate Commissioner for Patent Examination Policy, released
Interim Guidelines highlighting
factors to consider when determining whether a process claim satisfies the requirements for subject matter eligibility under 35 U.S.C. § 101. The guidelines appear to be
more in line with the recent Supreme Court decision in Bilski v. Kappos than the initial guidance that was set forth by the USPTO. For example, inherent recitation
of a machine-or-transformation in a process claim is sufficient to satisfy the requirements under 35 U.S.C. § 101. Or, as long as the concept of the claim is
implemented in some tangible way, then the process claim is considered to satisfy the requirements under 35 U.S.C. § 101.
To view the post, please select Articles 
101 Guidelines Bilski, or click
Here.
On July 9, 2010, the USPTO issued a draft of their 2010-2015 Strategic Plan. The strategic plan is designed to strengthen the capacity of the USPTO, improve the quality of
issued patents and trademarks, and shorten the time required to acquire a patent. This is the first article in a multiple article series by Sheetal Patel that will discuss
the various components of the draft Strategic Plan.
To view the post, please select Articles Strategic Plan 1, or click
Here.
The management at the USPTO has demonstrated a strong commitment to reducing the overall backlog of applications. The stated goal of the newest initiative in this
respect is to reduce the overall backlog to 699,000 applications by September 30, 2010. While certain incentives are explicitly provided for supervisory Examiners,
and perhaps implicitly for non-supervisory Examiners, whether these incentives are sufficient to facilitate reaching this goal remains to be seen.
To view the post, please select
Articles USPTO Backlog Goal, or click
Here.
Authorized Examiner overtime was increased to 40 hours per biweek on July 16, 2010 (up to a certain paycap based on the Examiner's position). This increase may be related
to the USPTO's new goal of decreasing the backlog of unexamined patent applications below 700,000 by the end of the year (more on this later today).
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The Court of Appeals for the Federal Circuit (CAFC) recently issued a precedential opinion, In re Giacomini. Since Giacomini did not dispute that the asserted
Tran patent describes the invention claimed in Giacomini's patent application, the central issue at the Board was the eligibility of the Tran patent to serve as prior
art under 35 U.S.C. § 102(e). The court then explained that 35 U.S.C. § 111(b)(8) makes it clear that provisional patent applications and non-provisional patent
applications are given the same privileges under 35 U.S.C. § 119. In light of these sections of the U.S. Code and the long-standing rule that the patentee must be the
first inventor, the court held that the Tran patent could claim priority to the earlier-filed provisional application to invalidate the Giacomini application.
To view the post, please select
Case Summaries In re Giacomini, or click
Here.
Despite the Supreme Court's clear ruling that M-or-T is not the only test for determining subject matter eligibility under 35 U.S.C. § 101, the USPTO has instructed
Examiners to reject claims under the M-or-T Test and allegedly pass the burden to Applicants to demonstrate subject matter eligibility. However, merely demonstrating
that claims do not meet the M-or-T Test does not show that the claims are directed to an excluded class of subject matter. Rather, the USPTO must demonstrate that the
claims are either directed to abstract ideas, laws of nature or natural phenomena. In responding to forthcoming rejections under 35 U.S.C. § 101, Applicants may
allege that applying the M-or-T Test does not meet the burden of making a prima facie case, and further argue that the claims are not directed to an abstract
idea, a law of nature or natural phenomena.
To view the post, please select
Prosecution Topics 35 U.S.C. § 101 101 Rejection Bilski on the side menu, or click
Here.
The Court in Bilski largely restored the legal landscape to what it was before the CAFC's opinion. It did not provide a specific test or bright-line rule for
determining whether a claim is an abstract idea and did not apply the machine-or-transformation test to Bilski's claims. Rather, the Court applied a
case-based analysis that primarily focused on the overall thrust, breadth, and widespread applicability of Bilski's claims. Thus, as claims become broader, while there
is no bright-line rule, it seems that the risk of the claims potentially being rejected as abstract ideas also increases. The Supreme Court case history with respect to
abstract ideas, and conclusions that may be drawn therefrom, are discussed in this article by Jared Olson.
To view the post, please select
Articles Bilski Abstract Ideas on the side menu, or click
Here.