Wednesday, July 07, 2010

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

12 Comentários:

EG said...


Not to surprising but nonetheless disappointing. Even the words from our Judicial Mount Olympus hath no impact on the USPTO.

Electric Sasquatch said...

These instructions seem to be a bureaucratic knee-jerk to largely keep the existing system in place until the USPTO can review the case more thoroughly and provide better instructions.

Also, it is worth noting that MPEP 2106(IV) was replaced by the USPTO's Interim 101 Guidelines last year. However, Oetiker naturally remains good law and cannot be ignored.

Richard H Stern said...

Oetiker recognizes that the PTO uses "prima facie case" to shift the burden. That is all that this notice to staff does. It requires the applicant to state a reason why the claimed invention is not an abstract idea if the claimed invention flunks the MOTT. Note that it's just giving a reason, not even producing evidence -- thus a very slight burden shift. Quite reasonable given the statement in Benson et al. that all of our past precedents have fact patterns satisfying the MOTT, but we do not say there can never be an exception. --
Richard H. Stern, Washington DC

Anonymous said...


I believe that you miss the point. Even a "slight" burden shift is inappropriate if the prima facie case is not made.

Further, the Supreme Court expressly said that failing the Machine or Transformation test does NOT indicate patent ineligibility under Section 101. The burden of persuasion has not been met by the Office merely asserting that since the Machine or Transformation test has been failed and it "appears" that the claim is to a abstract concept.

Your idea of "quite reasonable" fails the legal testas provided in Oetiker, and is quite frankly highly unreasonable.

Your idea that the burden shift only entails "giving a reason, not even producing evidence" evidences a fundamental misunderstanding of what the burden shift entails and just why the Office memo is illegal.

Anonymous said...

And I would add that the Machine or Transformation test has been reduced (de facto) to a test to show patent eligibility. It is not a test to show patent ineligibility.

Since the presumption is that the application is eligible, the test, by itself and as indicated to be continued to be used, is insufficient for the legal denial of patent rights.

Cheryl R. Figlin. said...

I agree with Annonymous. This USPTO guideline of giving a 101 rejection purely on failing the test contradicts what the supreme court expressly said.

Feigin, Patent Attorney Pennsylvania, NJ, NY said...

Yes, but the USPTO needs some sort of bright line rule to tell their Examiners... and for most cases, they'd be right. Not a perfect system, but it's ... a system.

patent litigation said...

This post makes a good point. Maybe this is part of the USPTO's strategy of reducing potential backlog. David Kappos has stated that improving patent quality is one of his priorities, and the burden-on-the-applicant approach may be one way of addressing both patent quality and backlog reduction. If this approach results in fewer frivolous patent litigation actions, then maybe it's not so bad.

Anonymous said...

For an attorney to remark "Yes, but the USPTO needs some sort of bright line rule to tell their Examiners... and for most cases, they'd be right. Not a perfect system, but it's ... a system."
is incredulous. I don't care why someone in authority is telling examiners to do something illegal. "Because it's easy" is never and acceptable response.

Anonymous said...

"If a claim is rejected under section 101 on the basis that it is drawn to an abstract idea"

What legally sufficient articulated reasoning can examiners use to establish the basis that the claim is drawn to an abstract idea?

The Bahr memo seems as nebulous as the Supreme Court rationale.

Anonymous said...

The Bahr memo is now obsolete, as better instructions have been released, superceding the errant memo.

Anonymous said...

Software patents should be abolished altogether. Canada is one country, among a growing number of them, that does not allow for patenting of software per se. Because most, if not all major software companies are American, the US government actively lobbying for proliferation of software patents.

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