Factors That May Weigh In Favor Of, Or Against, Patentability

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1 CLIENT MEMORANDUM U.S. PATENT OFFICE PUBLISHES GUIDELINES FOR DETERMINING WHETHER PROCESS CLAIMS COVER ELIGIBLE SUBJECT MATTER IN THE WAKE OF THE SUPREME COURT S BILSKI DECISION The United States Patent and Trademark Office (PTO) published Interim Guidance on July 27, 2010, for evaluating method claims for subject-matter eligibility under 101 of the Patent Act. 1 This guidance follows the Supreme Court s recent decision in Bilski v. Kappos, 2 which held that the prevailing machine-or-transformation test whereby a method may be patentable only if it is tied to a particular apparatus or transforms a particular article to a different state or thing 3 is not the exclusive test under 101. However, the Supreme Court declined to adopt any additional test for determining whether a method is eligible for patentability, or to categorically exclude business methods or other types of processes from patentability. 4 The PTO s Interim Guidance seeks to fill this void by providing a set of factors for patent examiners to employ to determine if a method or process is patent-eligible. Several factors are drawn from the machine-or-transformation test, while others are directed to identifying attempts to claim unpatentable natural phenomena, scientific facts, general concepts, or other abstract ideas. The Interim Guidance also emphasizes that subject-matter eligibility is a threshold inquiry, and that in most cases patentability will hinge on novelty, non-obviousness, written description, and enablement. Factors That May Weigh In Favor Of, Or Against, Patentability In Bilski the Supreme Court returned to basic principles, explaining that method and process claims are generally patent-eligible unless they are directed to a law of nature, physical phenomena, or an abstract idea. Although the machine-or-transformation test is a useful and important clue to determine whether a claimed method impermissibly seeks to cover one of these three exclusions, it is not the only test. 5 The Interim Guidance accordingly provides a non Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos, 75 Fed. Reg (July 27, 2010), available at see 35 U.S.C S. Ct (2010). For further discussion of the Supreme Court s Bilski decision, please refer to our Client Memorandum dated July 1, 2010, available at %5C3402%5CSupreme%20Court%20Split%20Decision%20Upholds.pdf. See In re Bilski, 545 F.3d 943, 964 (Fed. Cir. 2008). See Bilski v. Kappos, slip op. at 7 8, Id. at 7 8. The Interim Guidance observes, however, that [t]o date, no court, presented with a subject matter eligibility issue, has ever ruled that a method claim that lacked a machine or transformation was patent-eligible. Interim Guidance, 75 Fed. Reg. at NEW YORK WASHINGTON PARIS LONDON MILAN ROME FRANKFURT BRUSSELS in alliance with Dickson Minto W.S., London and Edinburgh

2 exclusive list of factors to determine whether the claimed invention, viewed as a whole, is disqualified as being a claim to an abstract idea. 6 Each relevant factor is to be considered, and no single factor is determinative. 7 Factors weighing toward eligibility include: 1. Recitation of a particular machine or particular transformation. 2. The machine implements the steps of the method. 3. An article undergoes a change in state or thing (e.g., an objectively different function or use). 4. The article being transformed is an object or substance. 5. If the claim is directed to applying a law of nature, that application meaningfully limits the execution of the steps. 6. The claim is more than a mere statement of a concept and either describes a particular solution to a problem or implements the concept in some tangible way. 8 Factors that weigh against eligibility include: 1. No recitation, or insufficient recitation, of a machine or transformation. 2. The machine or transformation is nominally, insignificantly, or tangentially related to performance of the steps of the method. 3. The machine is only generically recited or merely an object on which the method operates. 4. The transformation involves only a change in position or location of an article. 5. The claim would monopolize a natural force, patent a scientific fact, or effectively grant a monopoly over a concept Id. at Id. at Id. at Id

3 Although it is no longer the exclusive test, the machine-or-transformation test continues to play a prominent role in the analysis. According to the Interim Guidance, a method is more likely patentable if it is tied to a specifically identified machine or apparatus that implements a step of the method, it is integral to the method, or it imposes nontrivial limits on the method. 10 Additionally, a method is more likely patentable if it involves the transformation of a particular object or substance to one with a different function or use. 11 Other factors identified by the Interim Guidance are directed to subject matter that might fail the machine-or-transformation test but might nevertheless be patentable. Even in the absence of a particular machine, apparatus, or transformation, a method could be patentable if performing it involves only a specific application of a law of nature, does not cover every mode of accomplishing its effect, or does not rely solely on subjective determinations. 12 The Interim Guidance notes that the involvement of a general concept is a clue that the claim is drawn to an abstract idea. 13 One frequent objection to allowing patents on abstract ideas is that the coverage would be unacceptably broad, encompassing potentially every solution to a certain problem, or every application of a natural force or scientific fact. Where a method involves a general concept, the Interim Guidance instructs that the degree to which the claim would foreclose others is relevant to whether it is an unpatentable abstract idea. A method is less likely to be patentable if it preempts use in other fields, effectively covers all possible solutions to a particular problem, or encompasses uses that are not yet known. 14 Additionally, a method that is disembodied or has subjective or imperceptible results also is less likely to be patentable. 15 The Interim Guidance offers examples of general concepts: basic economic practices or theories, legal theories and rules of law, mathematical concepts, mental activity, interpersonal interactions, teaching concepts, human behavior, or instructing how business should be conducted. 16 In general, method claims directed to these types of general concepts would not be patent eligible. The Interim Guidance cautions that these factors are intended to be useful examples and are not intended to be exclusive or limiting. 17 New factors may be developed, and existing factors may be modified, to take into account developments in the law and PTO practice Id. at Id. 12 Id. 13 Id. 14 Id. at Id. at Id. 17 Id. at See id

4 The Role Of Subject-Matter Eligibility In Patent Prosecution The Interim Guidance instructs that examiners should reject claims that attempt to cover abstract ideas, and should specifically point out the factors that are relied upon as the basis of a rejection under 101 or, if appropriate, allowance of a claim. 19 To establish a prima facie case of unpatentability under 101, the examiner must provid[e] clear rationale supporting the determination that an abstract idea has been claimed The conclusion must be based on the claim as a whole. 21 The applicant will then have the opportunity to explain why the claimed method is not drawn to an abstract idea. 22 Although the focus of the Interim Guidance is the subject-matter eligibility analysis under 101, the Interim Guidance also downplays the relative importance of this analysis as a determiner for patentability: Section 101 is merely a coarse filter and thus a determination of eligibility under 101 is only a threshold question for patentability. Sections 102 [novelty], 103 [obviousness], and 112 [written description and enablement] are typically the primary tools for evaluating patentability unless the claim is truly abstract Accordingly, the Interim Guidance instructs examiners to avoid treating an application solely on the basis of patent-eligibility under 101 except in the most extreme cases. 24 Implications Although the Interim Guidance lacks the force of law or a substantive rule, 25 it will guide the examination of patent applications and may be considered by courts in evaluating the validity of method claims. Although business methods are not categorically excluded from patent protection under Bilski, 26 these and other types of methods including, software, financial services, pharmaceutical testing, or medical treatment methods may be subjected to scrutiny in the PTO and in litigation based on the various factors set out in the Interim Guidance. 19 Id. at Id. 21 Id. (emphasis in original). 22 See id. at 43923, Id. at Id. at Id. at See Bilski v. Kappos, slip op. at

5 The PTO has requested public comment on its Interim Guidance, and in particular seeks comments on (1) the scope and extent of the holding in Bilksi, (2) the extent to which application of the machine-or-transformation test would exclude otherwise patentable methods or include unpatentable abstract ideas, and (3) whether there are classes of business methods that are categorically unpatentable. 27 Written comments must be received by September 27, * * * * * * * * * * * * * * * For further information regarding this memorandum or intellectual property issues generally, please contact Kelsey I. Nix ( , knix@willkie.com), Robert G. Kofsky ( , rkofsky@willkie.com), or the attorney with whom you regularly work. Willkie Farr & Gallagher LLP is headquartered at 787 Seventh Avenue, New York, NY Our telephone number is (212) and our facsimile number is (212) Our website is located at August 2, 2010 Copyright 2010 by Willkie Farr & Gallagher LLP. All Rights Reserved. This memorandum may not be reproduced or disseminated in any form without the express permission of Willkie Farr & Gallagher LLP. This memorandum is provided for news and information purposes only and does not constitute legal advice or an invitation to an attorney-client relationship. While every effort has been made to ensure the accuracy of the information contained herein, Willkie Farr & Gallagher LLP does not guarantee such accuracy and cannot be held liable for any errors in or any reliance upon this information. Under New York s Code of Professional Responsibility, this material may constitute attorney advertising. Prior results do not guarantee a similar outcome. 27 See Interim Guidance, 75 Fed. Reg. at Id. at The PTO prefers that any comments be submitted to Bilski_Guidance@uspto.gov