Interim Guideline for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos

By: Sheetal S. Patel

Overview of Interim Guidelines

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. In the memorandum, Mr. Bahr expressed that the USPTO will use the machine-or-transformation test as the investigative tool when determining whether a claimed invention is a patent-eligible process under 35 U.S.C. § 101.

However, the memorandum provides additional factors to aid in the determination of whether a claimed method that fails the machine-or-transformation test is nonetheless patent-eligible (i.e., is not an abstract idea), and also whether a claimed method that meets the machine-or-transformation test is nonetheless patent-ineligible (i.e., is an abstract idea). In addition, the memorandum suggests that, under the principles of compact prosecution, Examiners should avoid focusing only on issues of patent eligibility under 35 U.S.C. § 101 while neglecting requirements under 35 U.S.C. §§ 102, 103, and 112.

Factors Supporting Subject Matter Eligibility

• Recitation of a machine or a transformation, either expressly or inherently
• Machine-or-transformation is particular
• Machine-or-transformation meaningfully limits the execution of the steps
• Machine implements the claimed steps
• The article being transformed is particular
• The article undergoes a change in state or thing (e.g., objectively different function or use)
• The article being transformed is an object or structure


• The claim is directed to applying a law of nature
• The law of nature is practically applied
• The application of the law of nature meaningfully limits the execution of the steps


• The claim is more than a mere statement of a concept
• The claim describes a particular solution to a problem to be solved
• The claim implements a concept in some tangible way
• The performance of the steps is observable and verifiable

Factors Weighing Against Subject Matter Eligibility

• No recitation of a machine or transformation (either express or inherent)


• Insufficient recitation of a machine-or-transformation
• Involvement of machine or transformation with the steps is merely nominally, insignificantly, or tangentially related to the performance of the steps, e.g., data gathering, or merely recites a field in which the method is intended to be applied
• Machine is generically recited such that it covers any machine capable of performing the claimed step(s)
• Machine is merely an object on which the method operates
• Transformation involves only a change in position or location of article
• “Article” is merely a general concept (see notes below)


• The claim is not directed to an application of a law of nature
• The claim would monopolize a natural force or patent a scientific fact; e.g., by claiming every mode of producing an effect of that law of nature
• The law of nature is applied in a merely subjective determination
• The law of nature is merely nominally, insignificantly, or tangentially related to the performance of the steps


• The claim is a mere statement of a general concept (see notes below for examples)
• The use of the concept, as expressed in the method, would effectively grant a monopoly over the concept
• Both known and unknown uses of the concept are covered, and can be performed through any existing or future-devised machinery, or even without any apparatus at all
• The claim only states a problem to be solved
• The general concept is disembodied
• The mechanism(s) by which the steps are implemented are subjective or imperceptible

Examples of General Concepts

• Basic economic practices or theories (e.g., hedging, insurance, financial transactions, marketing)
• Basic legal theories (e.g., contracts, dispute resolution, rules of law)
• Mathematical concepts (e.g., algorithms, spatial relationships, geometry)
• Mental activity (e.g., forming a judgment, observation, evaluation, or opinion)
• Interpersonal interactions or relationships (e.g., conversing, dating)
• Teaching concepts (e.g., memorization, repetition)
• Human behavior (e.g., exercising, wearing clothing, following rules or instructions)
• Instructing “how business should be conducted”

Conclusion

The new guidelines do not appear to be stringent. Rather, 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 memorandum in its entirety, please click Here.