USPTO's Short-Term Bilski Approach: "Reject First, Ask Questions Later"

After the Bilski decision was rendered by the Supreme Court, the USPTO issued a press release, stating that the PTO "will be issuing guidance further interpreting the decision as soon as possible" and that the PTO will be issuing interim guidance for the examining corps in the meantime.

The interim guidelines state that the machine-or-transformation test should continue to be used as a "tool", but 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:

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-transfonnation 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.

Of course, 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)).

Read download the memo here (link)

Hat tip: Hal Wegner

Leahy Post-Bilski Comments and Patent Reform

As the summer recess approaches, it is all but certain that Congress will (again) postpone efforts to enact patent reform.  Since the manager's amendment (S. 515) was forwarded to the Senate in April, very little has been done in advancing the legislation.  Senate Judiciary Committee Chairman Patrick Leahy is understandably frustrated over the lack of any progress, stating in a recent interview "I don't know why this hasn't gotten floor time . . . This has nothing to do with ideology. We need an updated patent system to create and protect jobs, and it wouldn't add a penny to the deficit."

For whatever reason, Leahy apparently believes that the manager's amendment is a "done deal" in the Senate, and will be passed quickly, once the Senate has a chance to vote on it:

Leahy noted that the bill has three Republican co-signers, along with three Democrats. As a result, he predicted that once it gets floor time, the bill could get passed in just three days -- a blink of an eye compared to the marathon sessions it took to get stimulus, health care and financial reform passed.

What is even more interesting is that Leahy has openly come out against business method patents after Bilski, and appears to be under the impression that patent reform legislation can "fix" what Bilski could not.  From Leahy's website:

In Bilski v. Kappos, the Court unanimously affirmed the judgment of the Federal Circuit that the application for a patent on a business method should be rejected.  The Court’s opinion, joined by only five of the Justices, however, needlessly left the door open for business method patents to issue in the future, and I am concerned that it will lead to more unnecessary litigation.

Since the debate over comprehensive patent reform began many years ago, the Supreme Court has demonstrated an increased interest in patent law cases.  The Court’s decisions have moved in the direction of improving patent quality.  While today’s decision will take time to analyze and may not have advanced the law and created the stability and certainty that it could have, it appears to continue this trend, which is consistent with the goal of patent reform legislation pending in Congress.  The courts, however, are constrained by the text of our outdated statutes, and it is time for Congress to act.”

In the meantime, scholars, attorneys and businesspeople have continued to publish critiques of pending patent reform legislation, pointing out that many aspects of the Patent Reform Act have unintended, and potentially adverse, consequences.  Most recently, Medical Innovation & Business ran a special edition on patents and patent reform, which included articles such as:

Patent Reform: Effects On Medical Innovation Businesses
Kaswan, Renee; Boundy, David; Katznelson, Ron

Abstract

Abstract:

Go to Full Text of this Article

Alternatives to Legislative Patent Reform

Conversations with Two Chief Judges

Dowd, Matthew J.

Patent Reform's Weakened Grace Period: Its Effects On Startups, Small Companies, University Spin-Offs And Medical Innovators 

Boundy, David E.; Marquardt, Matthew J.  

Would Derivation Proceedings Be The Same As Derivation Interferences?

Gholz, Charles L. 

Post-Grant Review-Our Next Nightmare? VC Perspective 

Neis, John 

Post-Grant Review of U.S. Patents: Will Past Be Prologue?

Noonan, Kevin E  

The Gatekeeper Patent Damages Compromise of S. 515 

Johnson, Philip S.

The Proposed Interlocutory Appeals Provision of Patent Reform: Is It Dead Yet?

Reines, Edward; Greenblatt, Nathan

While patent reform is not a partisan issue, it is certainly a regional and industry-specific issue, and both parties are split on it.

To read these, and other articles from Medical Innovation and Business on patents and patent reform, click here (link)